The Software IP Report

Copying the Look and Feel of Tetris Is Software Copyright Infringement

By Charles Bieneman

Categories: Copyright, The Software IP Report

Xio Interactive did not dispute that it blatantly copied the look and feel of the Tetris video game, even if not its source code.  After Xio’s Mino game was posted on Apple’s iTunes store, Tetris Holding, LLC, sued Xio for copyright infringement and trade dress infringement.  The court granted summary judgment to Tetris on both claims, finding, with respect to the copyright infringement claim, that the look and feel of Tetris is copyrightable expression distinguishable from the ideas of the game.  Tetris Holding, LLC v. Xio Interactive, Inc., No. 09-6115 (D. N.J. May 30, 2012).

Tetris identified 14 copyrightable elements of the game that Mino had admittedly copied, and that Tetris argued constituted protectable expression.  These elements included the number and configuration of playing pieces, the size of the playing field, the way pieces moved in the playing field, the behavior of the game when a horizontal line was filled, and the behavior of the game when over, just to name some.

Xio’s copying did not arouse sympathy, to say the least.  Xio admitted that it had been founded for the purpose of making a game similar to Tetris for the iPhone, and that it had “downloaded Tetris’s iPhone application for the purpose of developing its own version and used it in the development of Mino.”  Further, Xio conceded the elements of copyright infringement, i.e., that it had copied elements of the Tetris game, and that Tetris owned a valid copyright.  Xio claimed that it had been careful not to copy protectable elements of Tetris, resting on the defense that the copied elements were not protectable expression but instead were unprotectable “rules, function and expression” that were “essential to the gameplay.”  Thus, the court explained that the question was “not whether summary judgment is appropriate, but rather, which party is entitled to summary judgment.”

Much of the court’s opinion is devoted to a detailed review of the case law concerning software copyright infringement, focusing especially on Whelan Assocs., Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222 (3d Cir. 1986) and Computer Assocs. Int’l v. Altai, 982 F.2d 693 (2d Cir. 1992), which each addressed the issue of how to separate ideas embodied in software from protectable expression.  The court noted that Whelan has been widely criticized and Altai widely followed.  However, the court here found that Altai’s abstraction-filtration-comparison test was “much the same analysis” as Whelan’s separation of “the purpose or function of a utilitarian work,” i.e., an idea, from “everything that is not necessary to that purpose or function,” i.e., “part of the expression of the idea.”

Here, Xio attempted to rely on the doctrines of merger, which holds that an expression is unprotectable when it is the only way of expressing an idea, and scènes à faire, which holds that expression compelled by a particular idea, e.g., standard or stock literary devices, are unprotectable.  In what the court described as a conflation of “the doctrines of merger and scènes à faire,” Xio argued that Tetris could not “protect expression inseparable from either game rules or game function.”  Further, according to Xio, Tetris could not protect by copyright what was properly only protectable by patent.

The court disagreed.  Simply because a work’s functional aspects could not be protected by copyright as with a patent, it did not follow “that any and all expression related to a game rule or game function is unprotectable.”  (Emphasis added.)  Because “almost all expressive elements of a game are related in some way to the rules and functions of gameplay,” Xio’s argument would create “an exception to copyright [that] would likely swallow any protection one could possibly have.”  Discussing a number of cases addressing the separation of idea and expression going back to Baker v. Selden, 101 U.S. 99 (1879), and focusing on Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807 (1st Cir. 1995), the court extracted the principle that expression had been held unprotectable where an idea or concept would have been useless without it.  For example, the hierarchical menu structure at issue in Lotus was very basic, and the ways in which it could be expressed were so limited that the expression of the menu merged with the idea of it.

Considering what could not be protected in Tetris, the court referred to fundamental rules of the game:

Tetris is a puzzle game where a user manipulates pieces composed of square blocks, each made into a different geometric shape, that fall from the top of the game board to the bottom where the pieces accumulate. The user is given a new piece after the current one reaches the bottom of the available game space. While a piece is falling, the user rotates it in order to fit it in with the accumulated pieces. The object of the puzzle is to fill all spaces along a horizontal line. If that is accomplished, the line is erased, points are earned, and more of the game board is available for play. But if the pieces accumulate and reach the top of the screen, then the game is over. These then are the general, abstract ideas underlying Tetris and cannot be protected by copyright nor can expressive elements that are inseparable from them.

With an identification of unprotectable elements out of the way, the court turned to what was protectable, beginning by showing almost indistinguishable screenshots of the two games side by side.  The court noted that “if one has to squint to find distinctions only at a granular level, then the works are likely to be substantially similar.”  Further, the court pointed to numerous elements of the games that were difficult to distinguish, such as the shape, color, and look of game bricks, the pieces formed from the bricks, the way the game pieces could be fitted together in a complete line, the pieces’ movement and rotation, the precise size of the playing field, the behavior of the display upon certain events, and other specific design choices that Xio had copied.  Xio’s defenses to the copyright infringement claim therefore failed as a matter of law.

The court was then able to dispose of the trade dress claim relatively quickly, because of the elements of trade dress infringement (distinctiveness giving rise to secondary meaning, lack of functionality, and likelihood of confusion), Xio disputed only that Tetris’s trade dress was non-functional.  Under both the analysis just conducted with respect to copyright infringement, and the standard established by Traffix Devices v. Mktg. Displays, 532 U.S. 23 (2001), Xio’s arguments failed.

I remember playing Tetris in law school as an escape from studying.  Without saying how long ago that was, it suffices to note that the game was still relatively new and different back then.  I certainly never would have guessed that the game would survive all those years to become embedded in the case law of the 21st century, as Tetris undoubtedly now will be.