FENWICK & WEST
Two Palo Alto Square
Palo Alto, California 94306
Telephone: 650-494-0600

Attorneys for Defendants Data East Corporation and Data East USA, Inc.

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA

CAPCOM U.S.A., INC.
a California Corporation,

Plaintiff,

vs.

DATA EAST CORP., a Japanese corporation, and
DATA EAST USA, INC., a California corporation,

Defendants.

Case No. C93 3259 WHO

Date: October 6, 1994
Time: 2:00 p.m.
Place: Courtroom Seven
Hon. William H. Orrick

Data East's Memorandum of Points and Authorities
in Support of Motion
For Summary Judgment Against Capcom's
Lanham Act and State Law Claims

INTRODUCTION

STATEMENT OF FACTS

ANALYSIS

Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d 440 (9th Cir. 1980)

American Rolex Watch Corp. v. Ricoh Time Corp., 491 F.2d 877 (2d Cir. 1974)

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 91 L.Ed.2d 202, 106 S.Ct. 2505 (1986)

Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296 (9th Cir. 1979)

Astra Pharmaceutical Prod., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201 (1st Cir. 1983)

B & L Sales Associates v. H. Daroff & Sons, Inc., 421 F.2d 352 (2d Cir.), cert. denied, 398 U.S. 952 (1970)

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989)

Bayline Partners, L.P. v. Weyerhauser Co., 31 USPQ2d 1051 (N.D. Cal. 1994)

Bose Corporation v. Linear Design Labs, Inc., 467 F.2d 304 (2d Cir. 1972)

Brown Bag v. Symantec Corporation, 960 F.2d 1465 (9th Cir.), cert. denied, 121 L.Ed.2d 141, 113 S.Ct. 1298 (1992)

Cavallo, Ruffalo & Fargnoli v. Torres, 1989 Copyright Law Decisions (CCH) ¶ 26,410 (C.D.Cal. 1989)

Celotex Corporation v. Catrett, 477 U.S. 317 91 L.Ed.2d 265, 106 S. Ct. 2548 (1986)

Clamp Manufacturing, Company, Inc. v. Enco Manufacturing Company, Inc., 870 F.2d 512 (9th Cir.), cert. denied, 493 U.S. 872 (1989)

Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 11 L. Ed. 2d 183, 84 S. Ct. 1162 (1964)

Conan Properties Inc. v. Mattel Inc., 712 F.Supp. 353 (S.D.N.Y. 1989)

Del Madera Properties v. Rhodes and Gardner, Inc., 820 F.2d 973 (9th Cir. 1987)

Eclipse Associates Limited v. Data General Corporation, 894 F.2d 1114 (9th Cir. 1990)

Escada AG v. The Limited, Inc., 810 F.Supp. 571 (S.D.N.Y. 1993)

Fabrica Inc. v. El Dorado Corporation, 697 F.2d 890 (9th Cir. 1983)

Farberware, Inc. v. Mr. Coffee, Inc., 740 F.Supp. 291 (D.Del. 1990)

First Brands Corporation v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir. 1987)

Freixenet, S.A. v. Admiral Wine & Liquor Co., 731 F.2d 148 (3d Cir. 1984)

Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837 (9th Cir. 1987)

Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 72 L. Ed. 2d 606, 102 S. Ct. 2182 (1982)

J. B. Williams Co. v. Le Conte Cosmetics, Inc., 523 F.2d 187 (9th Cir. 1975) cert. denied, 424 U.S. 913 (1976)

M. Kramer Manufacturing Co., Inc. v. Andrews, 783 F.2d 421 (4th Cir. 1986)

Le Sportsac, Inc. v. Dockside Research, Inc., 478 F.Supp. 602 (S.D.N.Y. 1979)

Lindy Pen Co. Inc. v. Bic Pen Corp., 725 F.2d 1240 (9th Cir. 1984), cert. denied, 469 U.S. 1188 (1985)

Litchfield v. Spielberg 736 F. 2d 1352 (9th Cir. 1984), cert. denied, 470 U.S. 1052 (1985)

Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984)

Motown Record Corp. v. George A. Hormel & Co., 657 F.Supp. 1236 (C.D.Cal. 1987)

Oreck Corp. v. U.S. Floor Systems, Inc. 803 F.2d 166, reh. denied, en banc, 808 F.2d 56 (5th Cir. 1986), cert. denied, 481 U.S. 1069 (1987)

Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1981)

Programmed Tax Systems, Inc. v. Raytheon Co., 439 F.Supp. 1128 (S.D.N.Y. 1977)

Prufrock Ltd., Inc. v. Lasater, 781 F.2d 129 (8th Cir. 1986)

Rachel v. Banana Republic, Inc., 831 F.2d 1503 (9th Cir. 1987)

Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215 (9th Cir. 1987)

Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225 (3d Cir. 1978)

Sears, Roebuck & Co. v. Stiffel Company, 376 U.S. 225, 11 L.Ed.2d 87, 84 S.Ct. 1131 (1964)

Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)

Shaw v. Lindheim, 919 F.2d 1353 (9th Cir. 1990)

Smith v. Montoro, 648 F.2d 602 (9th Cir. 1981)

Smith v. Weinstein, 578 F.Supp. 1297 (S.D.N.Y.), aff'd without op., 738 F.2d 419 (2d Cir. 1984)

Summit Machine Tools Manufacturing Corp. v. Victor CNC Systems, Inc., 7 F.3d 1434 (9th Cir. 1993)

Sunbeam Corp. v. Equity Industries Corp., 635 F. Supp. 625 (E.D.Va. 1986), aff'd without op., 811 F.2d 1505 (4th Cir. 1987)

Toho Company, Ltd. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1980)

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. ___, 120 L.Ed.2d 615, 112 S.Ct. 2753 (1992) 1

Venn v. Goedert, 319 F.2d 812 (8th Cir. 1963)

Vitarroz Corp. v. River Brand Rice Mills, Inc., 266 F.Supp. 981 (S.D.N.Y. 1967)

Warner Bros. Inc. v. American Broadcasting Companies, Inc., 720 F.2d 231 (2d Cir. 1983)

Lanham Act, 15 U.S.C. § 1051 et seq. passim

McCarthy on Trademarks (3d Ed.), Vol 1, § 11.06

As a matter of law, Capcom's effort to metastasize trade dress principles beyond their appropriate limits and into a new kind of intellectual property protection, more expansive than copyright, is demonstrably in error. Further, the claim that Fighter's History is a "copy" of Street Fighter is false and has already been substantially rejected by this Court.4 Capcom's assertion that the games are so similar that consumers are likely to believe that Fighter's History is a Capcom Street Fighter game faces an insurmountable obstacle: Data East's games are boldly and prominently marked in many places with Data East's completely distinctive Fighter's History trademark and, importantly, with its distinctive Data East® trade name and logo. In this brief, we show that Data East is entitled to summary judgment based on the following five independent grounds: (1) Street Fighter's so-called "trade dress" is not trade dress. (2) Capcom cannot meet its burden of proving that its trade dress is nonfunctional. (3) Capcom cannot meet its burden of proving that its trade dress is distinctive. (4) Capcom cannot meet its burden of proving that Data East "bodily appropriated" Street Fighter. (5) The prominent source identification and dramatically different labeling of Fighter's History precludes any finding of likelihood of confusion. As for the pendent state claims, they are all either preempted by federal copyright law, doomed by the outcome on the federal claims, or otherwise defective. In the First Amended Complaint, Capcom candidly reveals its real concern: the specter of competition in the marketplace: "Data East . . . [has] promoted and sold Fighter's History . . . in direct competition with Street Fighter II . . . ." First Amended Complaint

First, Capcom claims its entire game as trade dress. Capcom has stated in discovery that Street Fighter's trade dress includes:

"the distinctive appearance, fighting style, special and common moves, combination attacks, personalities, and other features of the Street Fighter characters . . . ; the name of the game and names of the characters; the distinctive style of graphics and animation used in the Street Fighter games . . . ; the sound effects of the Street Fighter games . . ."; and "the distinctive appearance of the Street Fighter II cabinet, including, but not limited to, the physical layout of the two eight-position joysticks and six-button control panels, the shape and colors of the cabinet, and the appearance of the various graphics and words on the cabinet."

Thus, Capcom claims that everything the player does or perceives in playing Street Fighter is Street Fighter's trade dress. The earlier copyright proceedings have focused substantially, though not entirely, on the games as actually played, particularly the characters, special moves, and control sequences. The Court has ruled that much of Street Fighter is not protectable in copyright, including the attract mode and the joystick and six-button control sequences, in part because they "served a 'utilitarian function.'" Aug. 19 Order at 13-14.

Subsequent discovery confirms the functionality and nondistinctiveness of the controller. Capcom has admitted it adopted the six-button controller for the Street Fighter games as a quality improvement over the previous control mechanism, a pounding pad, because the pounding pads were unreliable (Duke Depo. 88-90; 126-27 [Counsel Dec. Exh. D]). Use of a six-button controller is now a "common practice" in video arcade games. It is "the standard format of the arcade" games in Japan; "in fact the six-button control device with a joy stick is a conventional control panel in Japan for arcade games." It is now also available for purchase in the home market. (Id. at 90, 92, 93, 94.) Nondistinctiveness of Arcade Cabinets

Video game cabinets are also nonproprietary, functional and non-distinctive. The cabinets have the overall physical structure, standard in the industry, of a stand-alone box large enough to contain all of the necessary physical elements of the game. Manufacturers of one-on-one fighting games (including both Capcom and Data East) commonly sell their games already installed in the cabinets or in the form of kits that can be installed in available cabinets. Duke Depo. 188-89, 222-24; Jacobs Depo. 21 (Counsel Decl. Exhs. D, E). The kits include decals displaying the distinctive artwork touting the game, for placement on the marquee and elsewhere on the cabinet. The cabinets themselves are designed and manufactured by third parties. Capcom and Data East both do business with the same independent third-party supplier of generic cabinets, a company known as III-Koam. Duke Depo. 221-22; Jacobs Depo. 26-28.

Capcom has used a number of different styles of cabinets with Street Fighter (Duke Depo. pp. 221-22), and game manufacturers, including Capcom, commonly take no steps to maintain the exclusive use of their cabinets for their own games. As Capcom admitted in discovery, "Capcom does not attempt to exert control over owners of arcade cabinets that were originally sold with Street Fighter II video games with respect to whether the owner can install a different manufacturer's game in the arcade cabinet." Responses to Second Interrogatories, No. 33 (Counsel Decl. Exh. B); accord, Duke Depo. p. 223. "In view of the fact that an operator can essentially buy some form of generic cabinet which Capcom has no control over," Capcom's deponent Brian Duke admitted, "it's fair to say that Capcom doesn't take the shape of the cabinet in and of itself as an identifying feature of the Street Fighter game . . . ." Id.

Home versions of Fighter's History
Capcom amended its Complaint to add claims that home versions of Fighter's History for the Neo Geo system and for Super Nintendo Entertainment System (SNES) infringe Street Fighter's alleged trade dress. First Amended Complaint (hereafter referred to as "Complaint") 56-61, 84, 89, 93. None of the alleged similarity relating to the arcade games' control devices, cabinets or artwork have any bearing whatever on the home versions of Fighter's History, because the home versions do not come with control devices or cabinets and bear little (and different) artwork. It is undisputed that both the Neo-Geo and SNES home video versions of Fighter's History are designed for play on video game systems manufactured by third parties, and that all game cartridges containing the games are made by third parties to meet the specifications of the game systems manufacturers. The packaging for those cartridges bear Data East's name, trademarks and logos and some artwork. It is indisputable that the limited marking on the cartridge packaging for Data East's Neo Geo and SNES games in no way resembles that on Capcom's cartridges or packaging. Compare Exhibits F - I, Declaration of Counsel.

Before turning to the most critical elements of trade dress - the games' identifying trademarks, trade names, logos and cabinet artwork - we briefly set forth undisputed facts that relate to consumers' appreciation of the differences in appearance of the two games as they are encountered in the arcade versions.

Consumers' Familiarity With The Name Capcom
According to Capcom, the trademark and trade name Capcom and the trademark Street Fighter are indivisibly linked with each other and with the Street Fighter game. Every arcade or consumer version of Street Fighter has "the name 'Capcom' prominently displayed on it" (Morici Depo. I:204 [Counsel Decl. Exh. A]); the game is "synonymous" with Capcom (id. I:103); and "people say Street Fighter II and Capcom at the same time." (Id.) Indeed, Capcom states that "the game sold because it was Street Fighter II and Capcom made it." Capcom admits purchasers "are not only looking at the name 'Street Fighter II,' but are also looking for the name 'Capcom' on the package." (Morici Depo. I:103-04.)

Video Game Consumer Sophistication
Capcom currently is seeking to register with the United States Patent and Trademark Office ("Trademark Office") the trademarks Street Fighter and Street Fighter II, for use on the very games at issue here.7 In those still-pending proceedings where Capcom's ownership of the marks is being challenged by Scientific Toys, owner of Street Fighter for toy vehicles, the Trademark Office initially rejected Capcom's applications on the ground that "Street Fighter" is likely to be confused with previously-registered trademarks Road Fighter for video games and Scientific Toys' Street Fighter. In response, Capcom argued that the sophistication of video game customers eliminated any likelihood of confusion with the previously registered marks. Capcom averred that video game players exercise "a high degree of customer scrutiny and sophistication [that] eliminates possible customer confusion"; that its customers are "video game aficionados"; that their awareness of Street Fighter was "solidly linked to the product's brand name"; that "game customers will be sophisticated and careful"; and that video game purchasers are "sophisticated . . . with regard to the product's trademark."8

The Appearance Of The Capcom and Data East Arcade Games
Capcom alleges that due to Data East's supposed copying of Street Fighter, "potential video game players will be confused about the source of Fighter's History [games], . . . and will believe that they are CAPCOM Street Fighter games." Complaint 82. However, as demonstrated on the following fold out page, presenting photographs of the two games as they appear in an arcade, each game is clearly and colorfully marked with distinctive trademarks, trade names, logos, and artwork, proclaiming Street Fighter II from Capcom in large lettering, or Fighter's History from Data East in even larger lettering.9

The following two pages show, in greater detail, how the parties' trademarks, Street Fighter II and Fighter's History, appear on the games' 24" video screens.10 These screens shots, like those illustrated on the previous pages, are part of the displays that appear when the two games are in "attract mode." In each case, as the screen shots show, the parties spread their copyright notices in prominent lettering on the lower part of the screen. Thus, potential players are specifically apprised that the companies "Capcom Co. Ltd." and "Capcom U.S.A. Inc." own the copyrights to "Street Fighter II," and that "Data East Corporation" owns the copyrights to "Fighter's History."

Each game is also marked in a number of places with its manufacturer's trade name. In addition to its appearance on the computer screen, the name Capcom appears prominently on the Street Fighter cabinet in three places, in Capcom's characteristic white-on-red logo. The name Data East appears equally prominently in five places on Fighter's History, in Data East's characteristic logo, which invariably includes Data East's stylized initials "DE" accompanied by the words "Data East."11 See Marks Decl. Exhs. A and B. In addition to the copyright notices and other applications of Data East's name and logo, Data East has caused the "attract mode" of Fighter's History to flourish Data East's trade name and logo in vibrant, multicolored lettering. On the following page, we reproduce the Data East trade name as it appears, actual-size, on the video game screen of Fighter's History in the game's attract mode.12

"Summary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed 'to secure the just, speedy and inexpensive determination of every action.'" Celotex Corporation v. Catrett,477 U.S. 317, 327 (1986). Those goals mandate the entry of summary judgment, where, as here, there is no genuine issue of material fact, and where - in light of Capcom's burden of proof - the issues may not reasonably be resolved in Capcom's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). To withstand a motion for summary judgment, the non-moving party must come forward with evidence sufficient to establish every element essential to its case, even if the moving party presents no evidence. Celotex, 477 U.S. at 321-24. There is no evidence sufficient to support any of the essential elements of Capcom's claims herein.13

To prevail on its claim of trade dress infringement under the Lanham Act, Capcom must establish all of the following: First, that (as Capcom contends) the entirety of Street Fighter constitutes "trade dress" within the meaning of the Lanham Act; Second, that Street Fighter's "trade dress," so understood, is nonfunctional; Third, that its "trade dress" is either inherently distinctive or has acquired secondary meaning; and Fourth, that Data East has "bodily appropriated" Street Fighter II's trade dress; and Fifth, that there is a likelihood that potential consumers "will be confused about the source of Fighter's History, . . . and will believe" that Fighter's History is a "CAPCOM Street Fighter game[]." (Complaint ¶ 82.) Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. ___, 120 L.Ed.2d 615, 112 S.Ct. 2753 (1992); Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 841-42 (9th Cir. 1987) (considering issue of whether claimed trade dress qualifies as such before turning to protectability and likelihood of confusion); Shaw v. Lindheim, 919 F.2d 1353, 1364
(9th Cir. 1990) ("bodily appropriation" standard).

B. The Entirety Of A Computer Game Cannot Be Trade Dress

And Is Therefore Not Protectable Under The Lanham Act. In the Two Pesos, Inc. v. Taco Cabana, Inc. case, supra, the first question that the district court's instructions asked the jury to determine, prior to deciding whether a restaurant's trade dress was nonfunctional, distinctive, etc., was whether "Taco Cabana has a trade dress." 120 L.Ed.2d at 622, emphasis added. Similarly, in the Ninth Circuit's Fuddruckers case, the court addressed whether a restaurant's decor qualified as trade dress before considering whether it was protectable trade dress. 826 F.2d at 841-42. Because Capcom does violence to the fundamental principles underlying trade dress protection by characterizing its entire game as trade dress, it is necessary to consider that issue at the outset.

1.Capcom Claims That Everything The Player Does Or Perceives In Using Street Fighter - Meaning The Whole Of The Street Fighter Game - Constitutes Street Fighter's Trade Dress.

In ¶ 77 and 80 of the Complaint, Capcom broadly alleges that Street Fighter contains "distinctive, non-functional characters, graphics, physical elements and trade dress," and that Data East "copied" these "distinctive elements of the Street Fighter arcade games and cabinet, and other elements of the Street Fighter trade dress" into Data East's game. What are those elements? They are everything Capcom previously attempted to protect under copyright - they are the entire game. As Capcom stated in discovery, "[Street Fighter's] trade dress includes, but is not limited to the following: the distinctive appearance, fighting style, special and common moves, combination attacks, personalities, and other features of the Street Fighter characters, including the controls and user interface for the character's movements; the name of the game and names of the characters; the distinctive style of graphics and animation used in the Street Fighter games, including the appearance, layout, animation, and color combinations of the attacking and defending moves, the vitality bar, the menu selection screens, the 'versus' and 'victory' before and after screens, the attract mode, the ending sequences, the special effects, the 100 count timer, the other graphics and animation of the Street Fighter games; the sound effects of the Street Fighter games, including the type of music, the acceleration of the music at a particular time, the voices at the beginning and ends of matches, and the voices and other sound effects that accompany particular moves . . . [and] the distinctive appearance of the Street Fighter II cabinet, including, but not limited to, the physical layout of the two eight-position joysticks and six-button control panels, the shape and colors of the cabinet, and the appearance of the various graphics and words on the cabinet."14 Capcom's claimed trade dress is all-encompassing. In Capcom's view, the whole game is its own trade dress.15

Capcom has also confirmed that it is the game itself, rather than its packaging or appearance, which Capcom claims as trade dress, by adding claims against new Fighter's History products in its amended pleading. In alleging that the home version of "Fighter's History Dynamite" for the Neo Geo system infringed and that the home version of Fighter's History SNES would infringe, Capcom identified as copied features no elements of the home systems' packaging or external appearance, but only their "characters, special techniques, combination attacks, and joystick and button combinations required to invoke special techniques and combination attacks." Complaint ¶ 58, 61; see Counsel Decl. Exhs. F - I showing packaging of those products.

Not only does the entire game constitute claimed trade dress, but Capcom insists that any effort to understand Capcom's trade dress claim on the level of anything smaller than the indivisible whole of the Street Fighter game is erroneous: "[I]t is the combination of the numerous similarities in timing, moves, characters, controls, graphics, music, and other features that makes Fighter's History a copy of Street Fighter II, and thus it is meaningless to attempt to dissect and describe these similarities at the level requested by Data East." (Supple. Response to First Interrogatories, No. 4, pp. 2-3 [Counsel Decl. Exh. L].)

In light of Capcom's considered refusal to define any more narrowly what it claims as trade dress, the Court must take Capcom at its word. The Court must consider only whether the entirety of Street Fighter constitutes trade dress, whether that entirety is protectable, and whether it is infringed.

2. Trade Dress Protection Cannot Be Used To Bypass The Limitations Of Copyright Law.

In claiming trade dress protection for the entirety of its product, Capcom seeks to beget a new species of intellectual property protection, unrelated to the consumer protections at the core of the Lanham Act and unconstrained by the limiting principles of copyright and patent law, in order to evade the careful balance of public and private interests wrought by those laws.

The Court's denial of the preliminary injunction and its copyright summary judgment orders recognized that many of Capcom's characters were drawn from the public domain of stereotyped characters (although some of them arguably have expressive details), and that various claimed game elements such as the attract mode, vitality bar and control sequences represent mere ideas, scenes a faire or useful articles. All but 20 of Street Fighter's more than 650 moves, moreover, have now been held to be unprotectable under copyright as a matter of law. Having given proper consideration to Capcom's private interest in its limited creative expression, if any, on the one hand, and to the public's interest in free access to ideas and other items in the public domain, on the other hand, this Court has already held that the game as a whole is entitled to little protection. The basic issue posed by Capcom's Lanham Act theory, then, is whether the identical copyright-unprotectable whole, permeated as it is with ideas, stereotypes and technologies within the public domain, can be withdrawn from that domain and transformed into Capcom's private property merely by dubbing it "trade dress."

3. Trade Dress Protects Labels, Containers, And Packaging - Not Concepts Or Products.

In the proper circumstances, trade dress offers flexible protection against efforts to mislead the public by simulating the appearance or image of a product without actually copying the name or names under which that product is sold. But the protection given the appearance or image of products is an outgrowth of trade dress's traditional protection of the non-verbal aspects of markings, labels, containers and packages, and the "image" that trade dress protects must be understood in light of that purpose. Trade dress does not protect "images" in the sense of the basic concepts or ideas or substance embodied in a product. See Prufrock Ltd., Inc. v. Lasater, 781 F.2d 129, 131, 134 (8th Cir. 1986) ("core concept" or theme of restaurant is not trade dress). In a non-trade dress sense, for example, the "image" of a high performance sports car might be described as - "powerful vehicle with precise handling and great 'road feel'" - but this does not mean that the trade dress of a car includes its power, handling and road feel, and that no one else can build a car that has power, handling and road feel. The "image" that is protected by trade dress, on the contrary, is only the appearance or image of its source-identifying markers in their totality, whether they be trademarks, logos, labels, containers, exterior visual shapes or some combination of these. A wide range of possible elements may be deemed to be part of the trade dress of a product. But the range of potential elements does not mean that anything and everything constitutes trade dress; still less does trade dress encompass the product itself. Rather, "'[t]rade dress' is the appearance of the product . . . ." Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir. 1987), emphasis added.

As the Ninth Circuit observed in Fabrica Inc. v. El Dorado Corporation, 697 F.2d 890, 895 (9th Cir. 1983), quoting with approval an opinion Justice Stewart authored while sitting on the Sixth Circuit:

"'The difference in the protection against imitation which will be accorded to an article of commerce on the one hand, and to a package in which the article is marketed on the other, was long ago noted. . . . [T]he public policy which permits the imitation of an article of commerce is without relevance to the dress in which the article is marketed.'"

Plainly, the Ninth Circuit does not anticipate that this distinction in protection can be obliterated by the simple act of dubbing the article of commerce its own trade dress. As the Ninth Circuit explained in another case, "Trademarks are not properly used as patent substitutes to further or perpetuate product monopolies." Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296, 300 (9th Cir. 1979), citation omitted.16

Thus, Capcom cannot protect its game as trade dress. Most of the items Capcom points to as comprising its trade dress - e.g., "fighting style ... of the Street Fighter characters," "the controls ... for the character's movements," the "animation used in the Street Fighter games," "the voices and other sound effects that accompany particular moves"17 - do not make up the "image" of Street Fighter. They make up the Street Fighter game itself.

4. The Most "Expansive Definitions" Of Trade Dress Are Limited To Protecting External Appearances Or Packaging.

The cases that have gone the furthest in protecting trade dress have nonetheless observed the distinction between goods or services, on the one hand, and their associated trade dress, on the other. In Fuddruckers, for example, the Ninth Circuit never agreed that the trade dress rubric included anything more than "the total visual image of [Fuddrucker's] restaurant services," including the restaurant's "decor, menu, layout and style of service." 826 F.2d at 841, emphasis added. The court clearly limited trade dress in the case to the image of the restaurant, not its actual restaurant services. When, as was the case in Fuddruckers and in Two Pesos, the "product" at issue consists of "restaurant services," the decor and other protectable items are essentially the "packaging" in which such restaurant services are wrapped.

Revealingly, Fuddruckers cites, as an example of "expansive definitions of trade dress" (826 F.2d at 837) adopted by other courts, the definition employed in a case involving video games, M. Kramer Manufacturing Co., Inc. v. Andrews, 783 F.2d 421 (4th Cir. 1986). The "expansive definition" of trade dress adopted in M. Kramer, however, was limited to "the console in which the game is housed, the artwork on the glass panel upon which the video graphics are displayed, and the name [of the video game]." 783 F.2d at 447.

Notwithstanding that the games at issue were "virtually identical," the Fourth Circuit did not rule that the copied game was its own trade dress, or that anything beyond that which can be seen when a player approached the game constituted its trade dress.

5. Capcom's Trade Dress Claim Is At Odds With The Policy Of Free Competition In Goods Not Protected By Patent Or Copyright.

The out-of-bounds conception of trade dress asserted by Capcom not only contradicts established notions of what trade dress is; it raises profound tensions with the policies favoring free competition which the Supreme Court has repeatedly emphasized in addressing unfair competition claims.

The concern that broad protection of products themselves should not be granted under the guise of supposed consumer protection has been reflected in the Supreme Court's jurisprudence on the preemption of state "unfair competition" law by federal copyright and patent law. In companion cases decided thirty years ago whose principles were reaffirmed in 1989, the Supreme Court emphasized that parties are fully entitled to sell exact copies of unpatented articles, notwithstanding that "there could be 'confusion' as to who had manufactured these nearly identical articles." Sears, Roebuck & Co. v. Stiffel Company, 376 U.S. 225, 232 ((1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 ((1964).18 Accord, Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 156 (1989) ("we have consistently reiterated the teaching of Sears and Compco that ideas once placed before the public without the protection of a valid patent are subject to appropriation without significant restraint"); Bayline Partners L. P. v. Weyerhauser Co., 31 USPQ2d 1051, 1053 (N.D.Cal. 1994) ("The public policy favoring free competition dictates that a court must be extremely careful in finding a design protectable as trade dress.").

Although the principles articulated in these cases have not been held to bar all state regulation of trade dress, there would be a disturbing tension between the freedom to copy unpatented articles and ideas and the protection of trade dress, if unpatented articles could themselves be designated as their own trade dress. That tension is dissolved, however, when "trade dress" is limited to its proper realm - the packaging or appearance of products or services, but not the underlying articles of commerce. What Capcom claims is its trade dress is not trade dress, but is the total product. Capcom's claim must therefore be rejected.

C. Capcom's Claimed Trade Dress Is Not Protectable.

Even assuming, arguendo, that Capcom's claimed trade dress is trade dress at all, Capcom must show that it is nonfunctional and distinctive in order for it to qualify for protection under the Lanham Act. Two Pesos, 120 L.Ed.2d at 624; Bayline Partners, 31 USPQ2d at 1053; Rachel v. Banana Republic,, 831 F.2d at 1506 (burden of proof of nonfunctionality on plaintiff). Capcom can meet neither requirement.

1. The Pleadings And The Incontrovertible Facts Establish That Capcom's Alleged Trade Dress Is Functional.

Capcom's responses to Data East's Second Set of Interrogatories identify five broad elements of its claimed trade dress (we leave out only various phrases starting "including"):

"[1] the distinctive appearance, fighting style, special and common moves, combination attacks, personalities, and other features of the Street Fighter characters . . . ;
"[2] the name of the game and names of the characters;
"[3] the distinctive style of graphics and animation used in the Street Fighter games . . . ;
"[4] the sound effects of the Street Fighter games . . ."; and
"[5] the distinctive appearance of the Street Fighter II cabinet, including, but not limited to,
"[a] the physical layout of the two eight-position joysticks and six-button control panels,
"[b] the shape and colors of the cabinet, and
"[c] the appearance of the various graphics and words on the cabinet." (Responses to Second Interrogatories, Nos. 21 and 22; full responses quoted above [Counsel Decl. Exh. B].)

There is no need to engage in a prolonged analysis concerning whether certain "borderline" elements listed above are functional - particularly, the names of the game and of the characters, characteristics of the cabinet or appearance of graphics and words on the cabinet - because a moment's perusal shows that these elements are in fact incontestably different in the two games or are plainly unprotectable or both.19 Taking the remaining claimed elements of trade dress as a whole, it is manifest that the claimed trade dress is not protectable because Capcom's own pleadings prove that the trade dress is functional.

The Ninth Circuit recently confirmed the standard for determining functionality:

"'Functional features of a product are features 'which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product."' A product feature thus is functional 'if it is essential to the use or purpose of the article or if it affects the . . . quality of the article.' . . . [S]ome cases have even suggested that in order to establish nonfunctionality the party with the burden must demonstrate that the product feature '"serves no purpose other than identification."'"

Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1531 (9th Cir. 1992), citations omitted, emphasis added.
Capcom's pleadings confirm that Capcom's asserted trade dress is functional.

"Before Street Fighter, one-on-one fight games . . . employed simplistic fighting styles, with relatively primitive graphics. Street Fighter introduced two characters with novel fighting styles and special techniques . . . . Street Fighter also employed a novel system of physical controls . . . . Street Fighter II incorporated further ground-breaking innovations and game feature elaborations . . . . Each of the Street Fighter II characters also had its own distinctive and innovative fighting style and moves . . . . Street Fighter II used dramatically enhanced graphics for the characters' appearances, moves, and special techniques . . . ." Complaint, ¶¶ 12, 13, 14, 17, 24; see generally Complaint ¶¶ 10-40.

Regardless of whether these features and enhancements were as innovative as Capcom claims, Capcom alleges and therefore admits that (in Sega's words) they "affect[] . . . the quality" of the game and are "essential to the use or purpose" of the game: "The cumulative impact of these enhancements and original features," Capcom alleges, "produced an exciting game with varied, complex fighters, moves and controls. " Complaint ¶ 25.20

These features "constitute the actual benefit that the consumer wishes to purchase," Sega's other formulation of the functionality standard:

"Street Fighter II owes much of its success to its many innovative special moves and techniques, which make the game challenging and difficult to master. . . . By copying the characters' appearance, moves, and physical control combinations, as well as other elements of the Street Fighter II games, Data East . . . produced a game that allows an experienced Street Fighter II player to switch to Fighter's History and play at a similar level of proficiency with little or no practice or learning time. Data East . . . [is] thus attempting to 'free-ride' on the enormous investment of Capcom . . . in developing and marketing the Street Fighter games." Complaint, ¶¶ 7, 25, 54, 55.

Or, as Capcom put it in its Memorandum in Support of Motion for Preliminary Injunction (pp. 11, 13), that which Data East allegedly copied include "the most popular character" and "the most . . . popular features of Street Fighter II." Calling these "popular," alleging that Data East is seeking a "free ride" by giving Capcom's customers what they are used to and want, are merely other ways of saying that the collection of features supposedly copied embody the actual benefit the public seeks in purchasing the product.

Capcom may attempt to respond that even if its trade dress is comprised of various functional elements, the whole may still be protectable. Any such response would be meritless for two reasons.

First, as Capcom's pleading alleges, it is precisely the integrated whole of the purported trade dress of Street Fighter that is functional: it is the very combination of all of the elements that Capcom claims as its trade dress that is the actual benefit its customers seek. "[O]ur inquiry is not addressed to whether individual elements . . . fall within the definition of functional, but to whether the whole collection of elements taken together are functional." Fuddruckers, 826 F.2d at 842, footnote omitted. Capcom's own pleading demonstrates that the entire collection is functional.21

Second, even if there were any nonfunctional aspects of Street Fighter's claimed trade dress, this would not alter the conclusion of functionality where, as here, the overall product design "does not appear to be solely or even primarily geared toward consumer identification." Bayline Partners, 31 USPQ2d at 1053 (also warning of "need for caution in granting trade dress protection"); Clamp Manufacturing, supra, 870 F.2d 512, 516 (9th Cir.), cert denied 493 U.S. 872 (1989) ("[T]he right to copy better working designs would, in due course, be stripped of all meaning if overall functional designs were accorded trademark protection because they included a few arbitrary and nonfunctional features").

The conclusion is inescapable: Capcom's claimed trade dress is functional and unprotectable.

2. Capcom's Alleged Trade Dress Is Not Distinctive.

Trade dress, like any trademark, "is distinctive and capable of being protected only if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning." Two Pesos, 120 L.Ed.2d at 624, 628. Data East is entitled to summary judgment because there is no evidence to support either conclusion.

(a) Street Fighter's Trade Dress Is Not Inherently Distinctive.
Street Fighter's trade dress is not inherently distinctive for two reasons. First, trade dress comprised of common or functional elements, like Street Fighter's, is not inherently distinctive. As the Ninth Circuit held in Fuddruckers:

"Fuddruckers claims trade dress protection for the impression created by a collection of common or functional elements . . . . Such an overall impression may receive protection, but it is simply not the sort of arbitrary or uncommon trade dress that might qualify as inherently distinctive." 826 F.2d at 844.

To be inherently distinctive, the "intrinsic nature [of a mark must] serve[] to identify a particular source of a product." Two Pesos, 120 L.Ed.2d at 624. This Court has already determined, as a matter of law, that the overwhelming majority of features and elements of Street Fighter are not protectable under copyright law because they are "commonplace in the video game industry" and/or because they represented "stereotypes." Aug. 19 Order, pages 14-15.

Moreover, all or virtually all of Street Fighter's claimed trade dress is functional. If, for some reason, the functionality of the trade dress or of various elements of the trade dress does not bar it from being protected altogether, that functionality - along with the fact that the trade dress is comprised of "commonplace," "stereotyped" characters and moves - precludes any finding of distinctiveness. Certainly it is not the "intrinsic nature" of Street Fighter's broadly defined trade dress "to identify a particular source." Two Pesos, id.

Second, Street Fighter's trade dress is not inherently distinctive because it is "merely descriptive." Two Pesos, 120 L.Ed.2d at 624. "To be characterized as 'descriptive,' a term must directly give some reasonably accurate or tolerably distinct knowledge of the characteristics of a product." McCarthy on Trademarks (3d Ed.), Vol 1, § 11.06[1], page 11-26, citing Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694 (2d Cir. 1961). Street Fighter's "trade dress" - its actual characters, moves, graphics, music, etc. - gives accurate and distinct knowledge of the characteristics of the game, and therefore it is merely descriptive and not inherently distinctive.

(b) Street Fighter's Trade Dress Has And Can Have No Secondary Meaning.
Any claim that Street Fighter's trade dress has secondary meaning is erroneous as a matter of fact and of law. First, there is an absence of evidence to support any finding of secondary meaning. Celotex, 477 U.S. at 321-24. Second, there can be no such evidence, in light of the character of the claimed trade dress.

"To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 n. 11 (1982), emphasis added. The collection of elements that Capcom contends is Street Fighter's trade dress is "the product itself," and the "primary significance" of that collection of features in the minds of the public is obviously not to identify the source. Street Fighter's trade dress, consequently, cannot have secondary meaning. Thus, Street Fighter's trade dress is not protectable since it neither is inherently distinctive nor has secondary meaning.

D. Capcom's Inability To Prove "Bodily Appropriation" Of Its Supposed Trade Dress Precludes Any Likelihood Of Confusion Finding.

Capcom cannot prove - as it must to state a Lanham Act claim based on copying - that Data East "bodily appropriated" Capcom's Street Fighter video game. In this case, as in many others, a copyright infringement claim has been linked to and re-stated as a Lanham Act claim. The essence of a Lanham Act claim founded on copying (whatever label is affixed to it - unfair competition, misappropriation, passing off or reverse passing off) is simply that the defendant marketed an alleged copy of plaintiff's program or goods without revealing the program's true provenance, and thereby engendered a likelihood of confusion as to the source of the program. All such claims founded on copying, regardless of their form, have to prove copying sufficient to create a likelihood of confusion as to source.

Since Capcom's Lanham Act claims are based on allegations of copying, the Lanham Act claim cannot survive a holding or verdict that the copyright allegations are meritless. Brown Bag v. Symantec Corporation, 960 F.2d 1465, 1477 n. 6 (9th Cir.), cert. denied 113 S.Ct. 1298 (1992) (a "reverse passing off claim is . . . dependent upon a successful [copyright] infringement claim"); Warner Bros., supra, 720 F.2d 231, 246 (2d Cir. 1983) ("'the absence of substantial similarity leaves little basis for asserting . . . palming off' for purposes of a claim under section 43(a)"). Further, the Ninth Circuit has squarely held that a defendant can escape summary judgment on a copyright claim by showing that there is a jury issue on substantial similarity, but still lose its Lanham Act copying claim because a showing of substantial similarity is not enough to sustain a Lanham Act claim. Rather, "bodily appropriation" must be shown, for § 43(a) is simply not applicable "where the products at issue are merely substantially similar." Shaw v. Lindheim, supra, 919 F.2d at 1364 (9th Cir. 1990).
As the Shaw Court explained:

"We are reluctant to expand the scope of § 43(a) to cover the situation presented here. . . . In spite of the similarities . . . , the likelihood that the two works will be confused is minimal. We decline to expand the scope of the Lanham Act to cover cases in which the Federal Copyright Act provides an adequate remedy." Id. at 1364-65.

In this case, Data East is accused of a single wrong: alleged copying of the distinctive and expressive elements of Capcom's Street Fighter game into Data East's game Fighter's History. Whatever label - passing off or reverse passing off - is affixed to that conduct (and the two have been characterized by the Ninth Circuit as "economic equivalent[s]"22), the same standard of sufficient copying for Lanham Act confusion should apply. Here, as in Shaw, without a showing of "bodily appropriation," there is no Lanham Act copying claim.

Recently, in Summit Machine Tools Manufacturing Corp. v. Victor CNC Systems, Inc., 7 F.3d 1434 (9th Cir. 1993), the Ninth Circuit extended Shaw, demonstrating that the court intends to rein in expansive claims asserted under the rubric of § 43(a), claims which must in reality stand or fall depending on whether a copyright or patent infringement can be shown.

In Summit, the defendant was selling lathes imported from the same Chinese manufacturer with whom the plaintiff had an exclusive sales agreement. The plaintiff alleged no copyright or patent claim, but simply asserted that the defendant's sale of such goods constituted a false designation of origin in violation of § 43(a), on the basis that it was really plaintiff's lathes that defendant was selling, without telling anyone. Held: "absent bodily appropriation of its lathe, [plaintiff's] claim must fail." 7 F.3d at 1438. "Like the plaintiff's script in Shaw, Summit's lathe falls within the spheres protected by, or intentionally left unprotected by, copyright and patent law. " Id., emphasis added.

Where copyright law either "provides an adequate remedy" (Shaw) or has intentionally left the area unprotected (Summit), the Ninth Circuit has unambiguously signaled its "reluctan[ce] to expand the scope of § 43(a) to cover [such] situation[s]." 919 F.2d at 1364. Summit and Shaw stand for the proposition that in any case founded on a claim of copying, the Lanham Act is inapplicable absent proof of bodily appropriation.

In this case, Capcom alleges - but cannot prove - that Data East "copied" Street Fighter. Since, as follows from the Court's partial summary judgment ruling, Fighter's History is manifestly not a "bodily appropriation" of Street Fighter, Data East is entitled to summary judgment on the Lanham Act claim.23

E. Data East's Clear Labeling Of The Source Of Fighter's History Prevents A Likelihood Of Confusion.

Even if Capcom could overcome all other obstacles, the uncontroverted facts negate Capcom's claim (Complaint ¶ 82) that "[t]here is a likelihood that potential video game players will be confused . . . and will believe that [Fighter's History games] are CAPCOM Street Fighter games." Consider the salient facts:

"As Capcom admits in its Trademark Office filings, video game consumers are sophisticated consumers who scrutinize video games carefully, have a high degree of product awareness, and are sophisticated about trademarks. Street Fighter, Capcom avers, has a devoted, sophisticated following that pays careful attention to the Street Fighter brand name, and buys the game in part "because . . . Capcom made it."24 The Capcom name is strongly associated with the game.

This association means that when a customer observes a different source marked on an arcade game - Data East - he is immediately apprised that the game comes from a different company.

Data East's and Capcom's games are both clearly and effectively labeled with entirely different names, prominently featuring the respective source of goods. Data East's marks and logos appear with such prominence that there is no likelihood potential consumers will believe that Fighter's History is Capcom's Street Fighter game.

The effectiveness of the product labeling to preclude confusion is confirmed by the absence of any evidence of actual confusion.

1. There Can Be No Reasonable Likelihood Of Source Confusion Where, As Here, A Manufacturer Clearly Marks Its Products To Indicate The Actual Source Of Goods.

It is well-settled that potential confusion based on similarities of trade dress is dissipated by differences in labeling, and particularly by clear and effective disclosure of the source of the goods. First Brands Corporation v. Fred Meyer, Inc., 809 F.2d 1378, 1384 (9th Cir. 1987) ("'The ordinary purchaser is not likely to confuse [the parties' goods where] [t]he labels ... are substantially dissimilar.'"); American Rolex Watch Corp. v. Ricoh Time Corp., 491 F.2d 877, 879 (2d Cir. 1974) ("there is hardly likelihood of confusion or palming off when the name of the manufacturer is clearly displayed") (manufacturer's name on watch effective to preclude confusion even when not visible from a distance);Freixenet, S.A. v. Admiral Wine & Liquor Co., 731 F.2d 148, 151 (3d Cir. 1984) (notwithstanding that defendant's frosted black wine bottle was identical in shape and color to plaintiff's, the labels of the two bottles were so dissimilar as to rule out any possibility of confusion).25

Data East's Fighter's History game is a model of clear labeling. As demonstrated by the illustrations in the Statement of Facts of this Brief, following pages 7, 8 and 9, the labeling on Street Fighter and Fighter's History is dramatically different in overall commercial impact and rules out any likelihood of confusion as a matter of law. The parties' respective trade names, Capcom and Data East, are clear indications of source that appear multiple times on each product. The Data East house name appears five times on decals affixed to Fighter's History. Each game's "attract mode" includes screens that display its wholly different looking brand name, Fighter's History and Street Fighter, respectively, along with a copyright notice stating in half-inch-high lettering that the respective party holds the copyrights on its game. Fighter's History's attract mode also displays Data East's distinctive Data East name and logo on the screen in enormous lettering. The artwork affixed to the two cabinets is entirely different. Marks Decl. Exhs. A-D, P.

Not only is Data East's labeling different from Capcom's, but - of critical significance - Data East's video game labels clearly identify Data East as the source of the goods. Identification of the manufacturer is critical because trade dress is not protected against infringement or against confusing similarity in the abstract, but only against that similarity which leads to confusion "as to the source of the product." First Brands, 809 F.2d at 1383, emphasis added. When a manufacturer not only uses a distinctive brand name for its goods, as Data East has, but also expressly identifies itself as the source of the goods, any potential confusion evaporates completely. In a case similar to this one in relevant respects, the Federal Circuit emphasized the effectiveness of source-of-goods labeling in avoiding confusion, and held that such labeling negated any possible federal unfair competition claims. Litton Systems, Inc. v. Whirlpool Corp., supra, 728 F.2d 1423. The Court of Appeals reversed as clearly erroneous a district court's conclusion, in Litton, following a bench trial, that there was a likelihood of confusion between the trade dress of Litton's and Whirlpool's microwave ovens. The Federal Circuit chided the district court for "fail[ing] to recognize that '[t]he most common and effective means of apprising intending purchasers of the source of goods is a prominent disclosure on the container, package, wrapper, or label of the manufacturer's or trader's name * * * [and that when] that is done, there is no basis for a charge of unfair competition." 728 F.2d at 1446 (quoting Venn v. Goedert, 319 F.2d 12 (8th Cir. 1963)), emphasis added, original ellipsis and brackets.

In words that could serve as a rebuke to Capcom's claims, the Court of Appeals observed with some incredulity:

"The theory of the district judge . . . is that somehow Whirlpool unfairly competes with Litton despite placing the name Whirlpool on the front of its ovens in three places, while the name Litton nowhere appears on them. "The accused Whirlpool ovens . . . conspicuously display the word 'Whirlpool' . . . . Likewise, the name 'Litton' appears conspicuously on the front of the Litton ovens. Microwave ovens made by third parties, not involved in this litigation, display the same peculiarity. . . . Clearly, ordinary users . . . are accustomed to seeing the maker's or the brand name conspicuously placed for their edification, and distributors and dealers must suppose that this information is important to the consumer." 728 F.2d at 1446.

Litton Systems is squarely on point. The only difference is that Data East's name appears not three times, as in Litton, but SIX (6) times on the accused game, and that both the brand name and the maker's name are displayed on Data East's game - including in bright lettering five inches high - far more prominently than they were displayed on the microwave ovens. As in the case of the ovens, video game players are accustomed to seeing the manufacturer's name and brand name conspicuously placed on the goods: All other manufacturers of video game, like Data East and Capcom, place their names on their video games. See, e.g., Marks Decl., Exhs. E - M; see also Exhibits N and O. Not only "must [we] suppose this information is important to the consumer" because manufacturers uniformly provide the information (Litton), but Capcom has specifically admitted in discovery the importance of its trade name Capcom to the relevant consumers. See sub-section 2(b) below.

2. Capcom's Admissions And Other Evidence Confirm That There is No Likelihood of Confusion As To The Source Of Fighter's History.

Three other types of evidence - the sophistication of video game consumers, the specific awareness of the Capcom name among such consumers, and the absence of actual confusion - confirm that the product markings discussed above preclude any potential for confusion.

(a) The Sophistication Of Consumers Of Video Games Renders The Likelihood Of Source Confusion Negligible.

It is inherent in Capcom's trade dress claim that only sophisticated consumers of its product could be confused, for Capcom does not claim that the features a casual player or passer-by would notice - the names on the cabinet, the cabinet artwork or the attract mode, taken by themselves - are the source of potential confusion. Rather, Capcom contends that the alleged copying of the entirety of Street Fighter - including the fighting style, moves and attacks and personalities of its characters - gives rise to a likelihood of confusion. Only those players - the sophisticated and attentive players who have consecrated the "long learning time" needed to master Street Fighter's complex special moves and techniques (Complaint ¶ 54-55) - would be familiar enough with the special moves and with the personalities of the characters to come to regard those features as associated with one particular source of goods. Thus, it is only a sophisticated and careful user who could even possibly be the subject of Capcom's source confusion claim. Capcom admits the sophistication of its customers, and the critical importance of that factor, in its Trademark Office filings in support of pending applications for registration of Street Fighter marks. "To evaluate whether confusion is likely," Capcom states, "one must consider the marketplace in which the marks in question are used. Consumer sophistication is one of the most important factors in determining whether confusion is likely. A consumer who exercises a great deal of scrutiny in selecting a product . . . is therefore not likely to confuse it with a product of another." Capcom 11/23/92 Response to Trademark Office, p. 4 (Counsel Decl. Exh. C).

Capcom's admissions and averments, made by its authorized representatives to the Trademark Office, plainly state that players of video games (who are principally 12 to 18 year-old-boys26) are sophisticated consumers of video games. "The motivation underlying the purchase of [Capcom's] computer games produces a high degree of customer scrutiny and sophistication. This eliminates possible customer confusion . . . ." (Id., page 5, emphasis added.) As Capcom further explains,

"Children are particularly discriminating with regard to the characteristics and status appeal of different video games. Typically, a new game is introduced in an arcade where it is played by various children, often video game aficionados. . . . . Popular games, such as [Capcom's] STREET FIGHTER computer game product, rapidly attain a reputation and awareness among many more children than have actually played the game, an awareness and reputation that is solidly linked to the product's brand name. . . .

" . . . The specifics of [Capcom's] Street Fighter computer game . . . [have] become closely linked with [the] product's brand name, Street Fighter. This keen awareness of [Capcom's] computer game product, its characteristics and its brand name coalesce in the mind of the child to produce a high degree of product awareness. . . .

" . . . [I]t is safe to assume that game customers will be sophisticated and careful. This degree of purchaser care minimizes any possible confusion . . . ." (Id., 6-8, emphasis added.)
Could it be that video game players, while sophisticated about the games, are naive about the games' source-identifying marks? Not so, Capcom insists: "With regard to video games, . . . a sophisticated purchaser is very likely sophisticated not only with regard to the product, but also with regard to the product's trademark."

Capcom 5/25/93 Request to Trademark Office, p. 6, emphasis added (Counsel Decl. Exh. J).

Even a casual customer is not likely to believe that a game prominently marked with the Fighter's History trademark and with the Data East manufacturer's name is likely to have come from Capcom - let alone the sophisticated players of Street Fighter.

(b) The Strength of the Capcom and Street Fighter Marks Precludes Any Likelihood of Source Confusion.

As Capcom has repeatedly trumpeted, Street Fighter is "one of the most successful video games of all time," and it has "attracted a dedicated worldwide audience at the arcade and at home." Complaint ¶ 7. According to Capcom's Senior Vice President Joseph Morici, since its release, Street Fighter has been "the best-selling video game" on the market. Morici Depo. I:132 [Counsel Decl. Exh. A.])

Capcom consistently affixes both its trade name Capcom and its trademark Street Fighter II to its arcade and home games (Morici Depo. I:204), and Capcom has devoted vast sums to promoting both its name and its trademarks. (See Morici Depo., I:266-71) for Capcom's confidential estimated recent advertising expenditures.) Capcom's media investment has gained Street Fighter II the greatest name recognition of any game in its genre, id. 212, and has been entirely successful in strengthening the association of both its trade name Capcom and its trademark Street Fighter with the game. The specific significance of that name recognition is that consumers regard both the trademark Street Fighter II and the trade name Capcom as inseparable from the game:

" Q. [I]s it the case that, in fact, users are more likely to know the game as Street Fighter II than to know that it's a game manufactured by Capcom?

. . . "THE WITNESS [Capcom Senior Vice President Morici]: I think it's -- it's synonymous with Street Fighter and Capcom. I think it goes together. I mean, people say Street Fighter II and Capcom at the same time. I think the game sold because it was Street Fighter II and Capcom made it.

. . . "Q. And so, in buying the game, they are not only looking at the name 'Street Fighter II,' but are also looking for the name 'Capcom' on the package?

. . . "A. I think that is accurate." (Morici Depo. I:103-04.)

(c) "The Absence of Any Apparent [Actual] Confusion . . . Demonstrates That Confusion is Unlikely."

So Capcom explained to the Trademark Office in refuting an Examining Attorney's conclusion that Capcom's use of the Street Fighter mark was likely to be confused with previously registered marks Street Fighter for toys vehicles and Road Fighter for computer game programs and video output game machines. 27 The same principle applies in this case: the absence of proof of actual confusion is telling. 28

Data East's game has been in use in hundreds of arcades, movie theaters, restaurants and other public places across the United States for about a year and a half. Yet no instances of any consumer confusion as to the source of Fighter's History have come to light. In response to Data East's interrogatory on this point, Capcom was unable to offer even one example of actual confusion of a consumer or purchaser. Response to First Interrogatories, No. 14 (Counsel Decl. Exh. K). Neither have any of Capcom's deposition witnesses testified to the contrary.29 (We note that Magistrate Woodruff has held, with respect to Capcom's First Interrogatory Responses that "Capcom will have to live with those responses." Order filed August 2, 1994, p. 11.)

Street Fighter II's principal designer, Akira Nishitani, was asked in his deposition: "You've never heard anybody say that they were confused and believed that Fighter's History was Street Fighter II, have you?" After some hemming and hawing, he candidly responded: "I don't think that I have heard of anyone being so confused to think that." Nishitani Depo. V:694 (Counsel Decl. Exh. N).

Mr. Nishitani's unrehearsed disbelief that anyone could be "so confused to think that" Fighter's History was Street Fighter II was sound. Particularly because of the strength of Capcom's marks and the strength of the association of the Capcom name with the Street Fighter games, when consumers - especially sophisticated consumers - encounter a game that is conspicuously marked as Fighter's History from Data East, it is not likely they will be confused as to the source of that game.

F. A Summary Determination That There Is No Likelihood Of Confusion Is Appropriate.

The Ninth Circuit has articulated what have been characterized as multi-factor "tests" for considering likelihood of confusion.30 The Ninth Circuit has explained that the various factors are intended "as helpful guides to the district court," not as mandatory formulas. Eclipse Associates Limited v. Data General Corporation, 894 F.2d 1114, 1117-18 (9th Cir. 1990) (affirming district court's determination on likelihood of confusion against claim that district court erred by not applying 8-factor test).

"These tests were not meant to be requirements or hoops that a district court need jump through to make the [ultimate] determination [of whether there is a likelihood of confusion]. Our court has never articulated specific factors that a district court must recite and apply, instead, we have identified a non-exclusive series of factors that are helpful in making the ultimate factual determination." Id. at 1118.

Accordingly, summary judgment can be granted notwithstanding a possible dispute on certain factors:

"It may be that some of the factors . . . were disputed . . . , but the trial court correctly concluded that those factors were not sufficient to overcome the obvious inference from the exhibits themselves that no consumer . . . could possibly mistake the source of the advertised goods by believing that they were manufactured by plaintiff. That fact alone . . . entitled [defendant] to summary judgment." Eclipse Associates Limited v. Data General Corporation, 421 F.2d 352, 354 (2d Cir.), cert. denied, 398 U.S. 952 (1970), emphasis added. 31

The comparable inference from the exhibits in this case, showing the prominent and repeated labeling of Fighter's History with defendant's distinctive Data East mark, along with the other uncontroverted evidence, is that no consumer could reasonably mistake the source of Fighter's History or believe Fighter's History is a Capcom Street Fighter game. Summary judgment is therefore warranted. 32

G. Capcom's Lanham Act Claim Is Without Merit.

Capcom's federal trade dress claim, while imaginative, is fatally flawed. There is no genuine issue of material fact and summary judgment should be granted on any or all of the grounds set forth above. Alternatively, in the event the Court were not to dispose of the claim entirely, the Court should hold that those elements or features of Street Fighter that are most blatantly functional - among others, the physical controls and the control sequences essential to operating the game and the characters and their various moves - are beyond the scope of any trade dress in which Capcom has any protectable interest.

A. Capcom's State Law Claims Are Preempted.

Section 301(a) of the Copyright Act expressly preempts any common or state law rights equivalent to any of the exclusive rights within the general scope of copyright for works of authorship. In determining whether a claim is preempted, we do not look to the form of the cause of action in the abstract, but consider rather the substance of a particular claim in a particular case. A claim is preempted, the Ninth Circuit has taught, if it meets the following requirements:

"First, the [work at issue] 'must come within the "subject matter of copyright" as defined in Sections 102 and 103 of the Copyright Act. Second, the rights granted under state law must be "equivalent to any of the exclusive rights within the general scope of copyright as specified by Section 106 [of the Copyright Act]."'"

Del Madera Properties v. Rhodes and Gardner, Inc., 820 F.2d 973, 976 (9th Cir. 1987). However, under Del Madera's "'extra element test' . . . , a state law claim that appears equivalent to an exclusive right specified in 17 U.S.C. section 106 will survive preemption if it has an extra element that changes the nature of the action and protects rights qualitatively different from copyright rights." Cavallo, Ruffalo & Fargnoli v. Torres, 1989 Copyright Law Decisions (CCH) ¶ 26,410 at page 22,569, emphasis added (C.D.Cal. 1989) (holding California unfair competition claim pleaded as "passing off" claim to be preempted); Del Madera, 820 F.2d at 977.

Capcom's causes of action for trademark infringement, unfair competition and dilution satisfy both prongs of the Del Madera test, and lack an extra element that changes the nature of the action, hence the claims are preempted by the Copyright Act.

First, the video game works at issue are plainly within the subject matter of copyright. Second, the rights asserted under the state law causes of action are equivalent to those protected by copyright. Each of the state law causes of action expressly incorporates the federal copyright claims by reference; and the gravamen of each claim is that Data East misappropriated Capcom's efforts and engaged in California trademark infringement, unfair competition and dilution "[b]y manufacturing, distributing, displaying," etc. works that constitute or embody copies of Capcom's work of authorship, Street Fighter. See Complaint ¶ ¶ 1, 8, 53-55, 70-71, 88-89, 93, emphasis added.

Compare Copyright Act § 106 (copyright owner "has the exclusive rights ... (1) to reproduce the copyrighted work ... ; (3) to distribute copies ... of the copyrighted work ... ; (5) . . . to display the copyrighted work publicly," emphasis added). Thus, as the Ninth Circuit observed in Del Madera, the conduct against which the plaintiff seeks relief is "precisely the type of misconduct the copyright laws are designed to guard against." 820 F.2d at 977. Cf. Litchfield v. Spielberg, 736 F.2d 1352, 1358 (9th Cir. 1984), cert. denied 470 U.S. 1052 (1985), ("In so far as these state claims [unfair competition and misrepresentation] are restatements of the copyright infringement claims, they are preempted by federal copyright law").

The issue, then, is whether in the particular circumstances of this case Capcom's state law claims "have an 'extra element' which changes the nature of the action." Id., at 977 (citations omitted). The answer is No. Merely casting a claim as one that contains additional allegations or elements does not, by itself, add an "extra element" if the essence of the claim is one of improper copying or misappropriation. The plaintiff in Del Madera, for example, argued that its unfair competition claim should not be subject to preemption because it was based on a breach of fiduciary duty. "This argument, however, does not add any 'extra element' which changes the nature of the action." Id. at 977. The supposed "extra element" did not change the nature of the claim because an allegation of misappropriation was "part and parcel" of the copyright claim as well as the preempted claim. Id. In this case, as in Del Madera, allegations of misappropriation and of copying a copyrighted work are part and parcel of the state claims.

Although it has been stated in dicta that a claim of "passing off" under state unfair competition law may not be preempted, Warner Bros., supra, 720 F.2d at 247 (dismissing claim on merits), if a claim in substance does not involve an extra element, a plaintiff cannot save it from preemption by merely recasting the claim in the conclusory language of a passing off claim. Cavallo, Ruffalo, 1989 Copyright Law Decisions at p. 22,570 ("Plaintiff's alleged 'passing off' theory is but a restatement of its preempted misappropriation theory. ... Although pleaded as a 'passing off' claim, Plaintiff's Fourth Cause of Action is more appropriately a misappropriation claim."); Motown Record Corp. v. George A. Hormel & Co., 657 F.Supp. 1236, 1239-40 (C.D.Cal. 1987) (California unfair competition claim involving unauthorized use of image of "The Supremes" in connection with copyrighted song preempted: "essence of plaintiffs' complaint is derived from defendants' alleged unauthorized use of a copyrighted work."). See Smith v. Weinstein, 578 F.Supp. 1297, 1307 (S.D.N.Y. 1984), aff'd without op., 738 F.2d 419 (2d Cir 1984), ("plaintiff cannot merely rephrase the same claim citing contract law"). Similarly, asserting that the identical facts give rise to a violation of California anti-dilution law adds nothing that changes the nature of the claim. Escada AG v. The Limited, Inc., 810 F.Supp. 571 (S.D.N.Y. 1993) (New York antidilution statute preempted); see Toho Company, Ltd. v. Sears, Roebuck & Co., 645 F.2d 788, 791, 793 (9th Cir. 1980) (New York's antidilution statute similar to California's).

Although Capcom attempted to graft some additional verbiage onto its state court claims to save them from preemption, the substance of the claims is what governs. The claims contain no specific recitation of conduct by Data East supposedly constituting the wrongs at issue, other than that incorporated by reference from other claims, principally the claims of copying. In each instance, the alleged wrong stems from and only from the allegation that Data East wrongly copied from Street Fighter. Revealingly, the operative paragraphs of the Third and Fourth Causes of Action which say what it is that Data East has done that constitutes the claim all begin the same way: "By manufacturing, distributing, displaying, promoting, and selling Fighter's History, Data East . . . [has] engaged in unfair competition [or "unlawful dilution"] . . . " Complaint ¶¶ 88, 89, 93.

The acts against which Capcom seeks relief are at the core of the Copyright Act (copying, distributing and displaying), and they are the kind of acts that are barred, or deliberately allowed to flourish, under the Copyright Act depending on whether protected matter is involved. However Capcom's claims are characterized, the alleged copying of Street Fighter into Fighter's History and the distribution of Fighter's History are the only acts Data East is claimed to have done to give rise to the claims. Pasting the labels "unfair competition," "California trademark infringement," and "dilution" on the claims does not change the nature of the action. As in Motown and the other cases cited, "The essence of [Capcom's] complaint is derived from [Data East's] alleged unauthorized use of a copyrighted work." The claims are all preempted.

B. Summary Judgment Against the Lanham Act Claim Is Dispositive of the State Law Claims

Dismissal of the Lanham Act claim disposes of the related California trademark and unfair competition claims. Toho Company, Ltd. v. Sears, Roebuck & Co., 645 F.2d 788, 791, 793-94 (9th Cir. 1980).

C. Capcom Dilution Claim is Baseless.

In addition to the considerations stated above, there are further and fundamental defects in Capcom's anti-dilution claim. Unlike the Lanham Act and state unfair competition claims, which allege that the trade dress of Fighter's History infringes the trade dress of Street Fighter, Capcom's Fourth Cause of Action for dilution alleges that the manufacture, etc. of Fighter's History is likely to dilute the "CAPCOM" and Street Fighter trademarks. Since the only substantive allegation regarding Fighter's History is that its trade dress is copied from Street Fighter, the Fourth Cause of Action represents a claim that Capcom's trademarks are diluted by the Fighter's History trade dress.

"The focus [of antidilution doctrine] is on damage to the mark's inherent value as a symbol," the Ninth Circuit noted in Toho, supra, 645 F.2d at 793. Obviously, a mark's inherent value can only be diluted or tarnished if there is identity or very close similarity between the accused mark and the allegedly diluted mark. See Fruit of the Loom, Inc. v. Girouard, 994 F.2d 1359 (9th Cir. 1993) (no California dilution claim; "there can be little doubt that . . . Fruit Of The Loom, is not at all close to TLF's Fruit Flops and Fruit Cups."). Based on the record adduced herein, this Court can determine as a matter of law that Fighter's History's trade dress is neither a copy of nor even similar to Capcom's various trade names or trademarks, and cannot dilute them. In fact, the notion that Fighter's History's "trade dress" (as Capcom broadly defines it) is so similar to Capcom's trademarks as to "dilute" the marks is ridiculous. 33

Respectfully submitted,
DATED: September 8, 1994
FENWICK & WEST

By:
William A. Fenwick
By:
Mitchell Zimmerman
Attorneys for Defendants
Data East Corporation and
Data East USA, Inc.

Notes

1 Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1531 (9th Cir. 1992).

2 Shaw v. Lindheim, 919 F.2d 1353, 1364 (9th Cir. 1990).

3 As in our previous paper, "Capcom" refers to plaintiff Capcom U.S.A., Inc.; "Data East" refers to defendants Data East Corporation and Data East USA, Inc. collectively; "Street Fighter" refers to all of Capcom's allegedly infringed games, collectively; and "Fighter's History" refers to all of the alleged infringing games. The ordinary type style "Street Fighter," "Fighter's History," "Capcom" and "Data East" refers to the games themselves and to the parties; the "small caps" type style "Street Fighter," "Fighter's History," "Capcom," and "Data East" refers to the parties' trade marks and trade names.

4 Memorandum Decision and Order filed August 19, 1994 ("Aug. 19 Order"), granting in part and denying in part Data East's motion for summary judgment on copyright claim.

5 Capcom's Second Cause of Action purports to state claims for trade dress infringement only, and not for trade mark infringement, hence we do not treat such a possible claim at length. In any event, however, any argument that the trademark Fighter's History is confusingly similar to Street Fighter II would be wholly frivolous. The overall marks are obviously different in sight, sound and meaning, and the only similar portion of the mark, "FIGHTER," is simply a descriptive term for the genre of games to which both belong, which Capcom describes as "fighting, combative, competitive games" (Morici Depo. I:179 (Declaration of Counsel Attaching Exhibits ["Counsel Decl."] Exh. A) or as "one-on-one fighting games" (Capcom's Response to Second Interrogatories [Counsel Decl. Exh. B], No. 7). Interestingly, in its pending trademark application to register the mark Street Fighter, Capcom has recently argued that even so similar a mark as "Road Fighter" for video games is not confusingly similar to Street Fighter, in light of differences in connotation, the sophistication of the relevant consumers and the strength of the Street Fighter mark. Indeed, Capcom even contends that the identical mark, Street Fighter, for toys is not confusingly similar to Street Fighter for video games, for the same reasons. In re Trademark Application of Capcom Co., Ltd. for the mark STREET FIGHTER (Serial No.: 74/248,472), Capcom's Response to Office Action dated November 23, 1992 ("Capcom 11/23/92 Response to Trademark Office") (Counsel Decl. Exh. C), pp. 8-15.) As Capcom stated in distinguishing the prior registration for video games for Road Fighter, "Although the two marks share the use of 'FIGHTER,' . . . it is erroneous to deem two marks confusingly similar merely because they share a common element." (Id. p. 12.) The descriptive, nondistinctive and nonconfusing character of the word "Fight" is confirmed by the fact that a number of other video games within the fighting game genre use Fight or Fighter as part of their trademarks, for example, Burning Fight (by SNK) and Pit Fighter (by Atari). See Bochner Declaration.

6 Responses to Second Interrogatories, Nos. 21 and 22; see full responses, Counsel Decl. Exh. B. See further discussion of scope of claimed trade dress in Section II. B below.

7 Capcom 11/23/92 Response to Trademark Office (Counsel Dec. Exh. C).

8 Capcom 11/23/92 Response to Trademark Office, pages 4-7; and in same proceedings, Capcom's Request for Reconsideration Under Rule 2.64(b), dated May 25, 1993 (hereafter "Capcom 5/25/93 Request to Trademark Office"), page 6 (Counsel Decl. Exh. J).

9 Declaration of Martin Marks, Exhs. A and B.

10 Marks Decl. Exhs. C and D.

11 These source marking practices are not unique to Capcom and Data East. Arcade game manufacturers typically affix their name and logo to the cabinet, in addition to the name of the particular game and distinctive artwork. Marks Decl. Exhs. E - M.

12 Marks Decl. Exh. P.

13 Summary judgment is common and appropriate in trademark cases. B & L Sales Associates v. H. Daroff & Sons, Inc., 421 F.2d 352, 354 (2d Cir. 1970) (affirming grant of summary judgment); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 492 (1st Cir. 1981) (same).

14 Responses to Second Interrogatories, Nos. 21 and 22 (objections omitted) (Counsel Decl. Exh. B); see also Responses to First Interrogatories, Nos. 1 and 4 , which are identical in substance (id., Exh. K).

15 Capcom's incorporation by reference of its copyright cause of action into the Lanham Act claim (¶ 65) is thus no mere formality: "Capcom does not contend that any feature of the trade dress of the Street Fighter video games is not an element or feature of the Street Fighter games that is protected by copyrights." Response to Second Interrogatories, No. 27 (Counsel Decl. Exh. B).

16 The plain language of the Lanham Act supports the conclusion that the Act was not intended to protect products, but at most those aspects of a product or an accompanying designation that are used to indicate source to the prospective purchaser. Section 43(a) renders liable those who "use[]" "any device . . . or any false designation of origin" "on or in connection with any goods or services . . . ." (Emphasis added.) The entirety of a product is not a device or designation which is used "on or in connection with" itself. A product is not its own trade dress.

17 Responses to Second Interrogatories, No. 21, pages 18-19 (Counsel Decl. Exh. B).

18 "That an article copied from an unpatented article could be made in some other way, that the design is 'nonfunctional' ..., that the configuration of the article copied may have a 'secondary meaning' ... or that there may be 'confusion' among purchasers ... may be relevant evidence in applying a State's law requiring such precautions as labeling; however, ... neither these facts nor any others can furnish a basis for ... prohibiting the actual acts of copying and selling." 376 U.S. at 238. In other words, so long as a party labels its goods clearly enough as to source, it cannot be barred from producing copied unpatented goods, notwithstanding that consumers might be confused by the similarities in the goods themselves.

19 Regarding the names of the games, "Fighter's History" is obviously different in sight, sound and meaning from "Street Fighter." See discussion in footnote 5 above. Regarding the names of the characters, there is no overlap at all between the two games. See list appended as Exhibit M to Counsel Declaration. Regarding the graphics and words on the cabinets, these are plainly different; see photos in Statement of Facts above, Marks Declaration Exhibits generally.

Regarding the cabinets: (1) In light of the facts summarized in the Statement of Facts (see Duke Depo. 188-89, 221-24; Jacobs Depo. 21-28; Resp. to Second Interrogs., No. 33 [Counsel Decl. Exhs. D, E & B]) indicating that the cabinets at issue are third-party-supplied generic cabinets; that various games are installed willy-nilly in different manufacturer's cabinets; and that Capcom makes no effort to control this phenomenon, there can be no claim that cabinets are distinctive of source or that particular cabinets and particular games are associated with one another. (2) Indeed, Capcom admits that "Capcom doesn't take the shape of the cabinet in and or itself as an identifying feature of the Street Fighter game ...." Duke Depo. p. 223 (Counsel Decl. Exh. D. (3) The general configuration of the cabinets is manifestly functional and nondistinctive, as it is used throughout the industry. (4) Even assuming Street Fighter consistently appeared in the same cabinets of the same color (which Capcom cannot show), Capcom cannot claim ownership of the color of a cabinet as its mark. First Brands Corp. v. Meyer, 809 F.2d 1378, 1382 (9th Cir. 1987).

20 Regarding the 6-button controller, in particular, obviously the device is, per Sega, "essential to the use" of Street Fighter. It is equally clear that it "affects the . . . quality" of the video game; as Capcom admitted in discovery, it adopted the six-button controller because the previous control mechanism, a pounding pad, was unreliable. Duke Depo. I:88-90, 126-27 (Counsel Decl. Exh. D).

21 Moreover, if Capcom asserts that its trade dress is a distinctive arrangement of functional elements, "'[U]nique arrangements of purely functional features constitute a functional design' not entitled as a matter of law to protection under the Lanham Act." Rachel v. Banana Republic, Inc., supra, 831 F.2d at 1506 (9th Cir. 1987). Accord, Clamp Manufacturing Company, Inc. v. Enco Manufacturing Company, Inc., 870 F.2d 512, 516 (9th Cir.), cert denied 493 U.S. 872 (1989) ("If the utilitarian aspects of the product are its essence, only patent law protects its configuration from use by competitors").

22 Summit Machine Tool Manufacturing Corp. v. Victor CNC Systems, Inc., 7 F.3d 1434, 1437 (9th Cir. 1993); Smith v. Montoro, 648 F.2d 602, 605 (9th Cir. 1981).

23 Cleary v. News Corp., 94 Daily Journal D.A.R. 10743, (9th Cir. 8/1/94) ("bodily appropriation" test) ("Because the [accused work] is more than a slight modification of the [earlier work], the district court properly granted summary judgment as to Cleary's Lanham Act claim."). 24 Morici Depo. I:103 (Counsel Decl. Exh. A).

25 Accord, Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1446 (Fed. Cir. 1984) (where manufacturer displays own name on goods, no likelihood of confusion and no Lanham Act claim); Bose Corporation v. Linear Design Labs, Inc., 467 F.2d 304 (2d Cir. 1972) (same); Venn v. Goedert, 319 F.2d 812 (8th Cir. 1963); Farberware, Inc. v. Mr. Coffee, Inc., 740 F.Supp. 291, 299 (D.Del. 1990) ("Confusion is unlikely ... when a product is prominently labeled"); Le Sportsac, Inc. v. Dockside Research, Inc., 478 F.Supp. 602, 609 (S.D.N.Y. 1979) (critical question is "whether it is likely that an ordinary prudent person would be confused by the two products. ... While it is true that the products in question are virtually identical in their nonfunctional design features, they are different [in labeling]. This labeling tends to eliminate the confusion that might otherwise result from the sale of such similar products."). See also Lindy Pen Co. Inc. v. Bic Pen Corp., 725 F.2d 1240, 1245 (9th Cir. 1984), cert. denied, 469 U.S. 1188 (1985), ("The pens' dissimilar appearance, the dominance of the company marks and logos on the pens themselves ... and the dissimilar ... packaging ... overcome the similarity of the marks considered in isolation"; distinguishing AMF Inc. v. Sleekcraft, 599 F.2d 341 (9th Cir. 1979), "where the house mark was inconspicuous and the logo often absent"). Language in Fuddruckers, supra, does not require a result at odds with the above holdings. The Fuddruckers court stated in a footnote: "The issue [-whether defendant's use of a name different from plaintiff's for its restaurant precluded a likelihood of confusion-] is properly part of the factual determination left to the jury." 826 F.2d at 846 n. 13. In Fuddruckers, it was merely the trademark of the restaurants that was different, which left an issue about whether the restaurants bearing the "Fuddruckers" and "Doc's B.R. Others" marks had the same source or were owned by the same people. Id. at 841 ("more than one hundred questions a week about whether Doc's and Fuddruckers had common owners"). In our case, by contrast, it is not only that the goods have different brand names; but - unlike Fuddruckers - the goods bear unambiguous source designations making it impossible for reasonably prudent consumers to believe, as Capcom alleges (Complaint &182; 82), that Fighter's History is Capcom's Street Fighter game. Also, there is no evidence that anyone has been confused, let alone one hundred persons a week. See sub-section 2, infra.

26 Morici Depo. I:203; (Counsel Decl. Exh. A).

27 Capcom 11/23/92 Response to Trademark Office, p. 2 (Counsel Decl. Exh. C).

28 Even a few isolated examples of actual confusion would be insufficient to sustain Capcom's claim. Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d 440, 444-45 (9th Cir. 1980); Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1231 (3d Cir. 1978) (district court committed "error in discerning from [small number of misdirected letters and calls] a 'pattern of confusion in the marketplace.'"). But Capcom's inability to adduce actual instances in support of its claim is highly probative of the absence of any likelihood of confusion. Oreck Corp. v. U.S. Floor Systems, 803 F.2d 166, 173, reh. denied, en banc, 808 F.2d 56 (5th Cir. 1986), cert. denied, 481 U.S. 1069 (1987) (in reversing infringement verdict, court considered absence of proof of actual confusion "highly significant" where accused mark in use for 17 months).

29 See, e.g., Morici Depo. I:85-88 (Counsel Decl. Exh. A).

30 AMF Inc. v. Sleekcraft Boats, supra, 599 F.2d 341 (9th Cir, 1979) (8-factor test); J. B. Williams Co. v. Le Conte Cosmetics, Inc., 523 F.2d 187, 191 (9th Cir. 1975) (6 factors), cert. denied, 424 U.S. 913 (1976); Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1212 (9th Cir. 1987) ( 5 factors). The 8 Sleekcraft factors are: 1) strength of the mark; 2) proximity of the goods; 3) similarity of the marks; 4) evidence of actual confusion; 5) marketing channels use; 6) type of goods and the degree of care likely to be exercised by the purchaser; 7) defendant's intent in selecting the mark; and 8) likelihood of expansion of the product lines. 599 F.2d at 348-49.

31 Accord, Warner Bros. Inc. v. American Broadcasting Companies, Inc., 720 F.2d 231, 246-47 (2d Cir. 1983) (affirming summary judgment: "if comparison of the works reveals no fair jury issue concerning likelihood of confusion, then intent to copy, even if found from the proffered evidence, would not establish a Lanham Act violation"); Astra Pharmaceutical Prod., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1205, 1209 (1st Cir. 1983) (affirming summary judgment despite identical marks where no likelihood of confusion when other factors considered); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 492 (1st Cir. 1981) (affirming summary judgment of no likelihood of confusion: "That 'Alpha" is a relatively strong mark reduces, but does not relieve Pignons of the burden [of presenting] sufficient evidence of a likelihood of confusion"); Programmed Tax Systems, Inc. v. Raytheon Co., 439 F.Supp. 1128, 1130 (S.D.N.Y. 1977) (granting summary judgment; "existence of some minor issues of fact with respect to one or two of these factors" does not preclude summary judgment for defendant on confusion); Conan Properties Inc. v. Mattel Inc., 712 F.Supp. 353, 362 (S.D.N.Y. 1989) (where no substantial similarity, even a small quantum of evidence of actual confusion "not weighty enough to withstand a motion for summary judgment"); Vitarroz Corp. v. River Brand Rice Mills, Inc., 266 F.Supp. 981, 983, 986 (S.D.N.Y. 1967) (granting summary judgment to defendant on confusion) ("Evidence of defendant's intent, where it has done nothing actionable, is immaterial").

32 Sunbeam Corp. v. Equity Industries Corp., 635 F.Supp. 625, 633-34 (E.D.Va. 1986) (granting summary judgment: "if properly labeled, consumer confusion should be precluded as a matter of law.").