In honor of this week's classes on substantial similarity

Capcom Co., Ltd. v. The MKR Group, Inc., 2008 WL 4661479 (N.D. Cal.)

This is an old case, but it was just so interesting I wanted to make a note of it: unprotectable scenes a faire can be extremely detailed.

MKR owns the copyrights and trademarks to the 1979 movie “George A. Romero's Dawn of the Dead,” a successful film (over one million DVDs sold plus $7 million in its first two years of release, and a licensing program for action figures, t-shirts, Halloween costumes, masks, and postcards). Capcom makes video games, including a survival horror game called “Dead Rising.” In a survival horror game, the player’s goal is to survive long enough to escape from an isolated location overrun with monsters such as zombies. Though Capcom earlier explored possible licensing of Dawn of the Dead, it ultimately didn’t go that route, and put a disclaimer on the box: “THIS GAME WAS NOT DEVELOPED, APPROVED OR LICENSED BY THE OWNERS OR CREATORS OF GEORGE A. ROMERO'S DAWN OF THE DEAD™[.]”

Plot: In Dawn of the Dead,

a plague reanimates the dead into flesh eating zombies and threatens to destroy the United States. After escaping from Philadelphia via helicopter, a television traffic helicopter pilot, Stephen, his pregnant girlfriend, Francine, and Philadelphia SWAT team members, Roger and Peter, land on a helipad on the top of a small town's shopping mall. Once in the mall, the four main characters barricade the complex, kill those zombies already inside, and then attempt to keep out others. Throughout the many months they are in the mall, the four main characters frequently visit its numerous abandoned shops in search of clothes, food, and weapons. Eventually, a motorcycle gang invades the mall, thereby opening the premises to a new zombie invasion. After the four main characters battle the intruders, Stephen and Roger fall victim to zombie bites and die agonizing deaths while Peter and Francine run to the mall's roof and escape in their helicopter.

In Dead Rising,

the video game player controls the main character, Frank West, a freelance photojournalist intent on photographing why the United States National Guard quarantined the fictional town of Willamette, Colorado. Frank discovers that the town is overrun with zombies. He takes pictures of the town from a helicopter and is then dropped off onto the rooftop of the town's shopping mall, which has a helipad. At this point, the player must battle nonstop against zombies and other characters to search for the truth behind the town's zombie infestation. The mall's stores provide Frank with the resources he needs to survive such as weapons and supplies. Throughout the game, the player must use Frank's camera to take pictures--more points are awarded for graphic photos. Depending in part upon critical choices made by the player, numerous characters of various kinds come and go as the game progresses. The ultimate goal is to survive for three days and return to the helicopter, having deciphered the cause of the zombie outbreak.

MKR eventually counterclaimed for copyright and trademark infringement and related torts. Capcom moved to dismiss, which meant that the court only looked at the works and not at other zombie movies and videogames that were allegedly “generally known.” Interestingly, the court also declined to consider something submitted as the “script” to Dead Rising, because the script didn’t indicate who wrote it, it was not filed with Capcom's pending copyright registration for Dead Rising, and “by its nature it may not track exactly how the game itself appears to the player.”

MKR argued that substantial similarity couldn’t be resolved on a motion to dismiss. But the works were before the court and could be compared; success on a motion to dismiss was possible if and only if the claim failed using the objective “extrinsic” test, focusing on similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events in the two works. The question is whether there might be substantial similarity in the protectable elements, filtering out the unprotectable elements.

MKR identified the following similarities: (1) both works are set in a bi-level shopping mall; (2) the mall has a gun shop, in which action takes place; (3) the mall is located in a rural area with the National Guard patrolling its environs; (4) both works are set in motion by a helicopter that takes the lead characters to a mall besieged by zombies; (5) many of the zombies wear plaid shirts; (6) both works feature a subtext critique of sensationalistic journalism through their use of tough, cynical journalists, with short brown hair and leather jackets, as a lead male character; (7) both works feature the creative use of items such as propane tanks, chainsaws, and vehicles to kill zombies; (8) both works are a parody of rampant consumerism; (9) both works use music in the mall for comedic effect; and (10) Dead Rising's use of the word “hell” references the tagline for Dawn of the Dead's release (“When there's no more room in hell, the dead will walk the earth.”).

The court found these insufficient to indicate copying of protected expression. The similarities were driven “by the wholly unprotectable concept of humans battling zombies in a mall during a zombie outbreak.” Each similarity ultimately had to be filtered out as unprotectable.

Both works had a scene where the main characters arrive at a shopping mall by helicopter, but the circumstances were very different—Dead Rising used that as the start of the main quest, while Dawn of the Dead didn’t immediately start at the mall. (And, though the court doesn’t say this outright, arriving by helicopter is a method of transport that makes sense if zombies are going to attack ground transport, thus putting the helicopter into the scene a faire category. My husband actually looks out for ground transport scenes in movies, where a train/bus/subway car is destroyed/overrun/whatever: we call it “bad for transit.”) The plot or sequence of events in the two works was otherwise widely divergent.

The characters were also not substantially similar. Though one in each was male with short brown hair, wore a leather jacket, and undertook activities connected to journalism, these were “elements of a stock character expected to be present in any number of stories.” Significant differences: Dead Rising’s white guy was the center of the story and was “a fairly cynical and athletic young freelance photographer who wants to report what is going on in the small town” while Dawn of the Dead’s white guy was “a timid non-athletic middle aged television news helicopter pilot of equal prominence with the other three characters. Beyond some superficial, generic physical similarities of gender, hair color and wardrobe, therefore, nothing links one to the other.”

Each work also had a tall, athletic African-American man who knew how to handle weapons, who exuded confidence and kept a cool head when surrounded by zombies. But these were stock attributes as well. Neither were developed much—the Dawn of the Dead character Peter was nothing more than expertise with weapons and sardonic demeanor, while Dead Rising’s Brad “is not developed beyond his part as a member of the Department of Homeland Security determined to rescue another particular character and depart the mall safely.” What interests me here is that where, with the white male characters, it was differences that made them not substantially similar to each other despite shared features, here it’s simple lack of development—the reasoning here resonates with arguments that non-white characters are less likely to get unique character development, and more likely to stay stock figures.

The zombies were also different. “Dawn of the Dead has a number of distinctive zombies ranging from a Hare Krishna, an extremely overweight character, and a girl with a distinctive yellow and green striped shirt. Others are dressed in plaid shirts or are covered with gore and blood. By contrast, Dead Rising lacks any similar distinctive zombie characters. All appear to be stock elements with largely generic attire. While Dead Rising does sport some zombies in plaid and covered in blood, those attributes are too hazy to amount to substantial similarity.” Plus, dozens of other characters in Dead Rising had no counterpart in Dawn of the Dead.

Any similarity in theme came from the unprotectable idea of zombies in a mall. Dawn of the Dead allegedly critiqued consumerism—“zombies seek to enter the mall in a desperate search for the consumer goods that drove them while alive. Ironically … the survivors in turn are trapped in the mall with all the consumer goods they could ever want, but can only enjoy them in the restricted world of the shopping mall itself.” Dawn of the Dead “does not begin to try to duplicate such a message.” Its theme was simple: kill zombies (and try to find the cause of the outbreak).

The only similarity in dialogue was a reference to hell. That’s not enough.

The works’ moods were difficult to compare because one was a movie and the other a video game. But they weren’t substantially similar: Dawn of the Dead was “dark, horrific, but somewhat comedic in featuring the main characters struggling to survive for months in the mall.” Dead Rising had a mood of “adventure and mystery”—it focused on action and competition instead of Dawn of the Dead’s atmosphere of suspense and anxiety. Dead Rising had its comic moments, including the use of comedic weapons such as pies, but that’s common to the genre.

The setting was also not substantially similar: the rural two-story malls with a helipad on top and a gun shop and music playing inside were scenes a faire flowing from the unprotectable idea of zombies in a mall. And the malls were different: one was relatively small with a major department store and an ice rink, while the other was a mega-mall without a major department store or ice rink, but with separate theme-based sections including a roller coaster, theater, outdoor park, supermarket, and underground tunnel system. Escalators and a fountain in both were merely typical of malls.

There was also no substantial similarity in pacing. Dawn of the Dead took place over many months, while Dead Rising plays out over three days. As for what’s on screen, Dawn of the Dead moves from slow to fast, whereas Dead Rising is constant, fast-paced action “depending on the player's preference …, if the player chooses not to follow the storyline cues, then the pace slackens and the player wanders the mall and confronts zombies.” Even if we called that similarity, that wouldn’t create an overall issue of substantial similarity.

The total concept and feel also differed: “Dawn of the Dead is of a world under seige, while Dead Rising presents an environment to be conquered.”

MKR argued that the industry saw Dead Rising as an obvious rip-off of Dawn of the Dead. But that wasn’t the question, which was whether Dead Rising copied protectable elements. Since MKR flunked the extrinsic test, “the perception in the marketplace that a work has been lifted, accurate or otherwise, simply does not come into play.”

The Lanham Act claim was likewise dismissed, even though MKR successfully pled around Dastar by claiming that Capcom was misusing Romero’s name, the term “dead” in its title, and the zombie head design on its packaging. (MKR also pled infringement based on the “plaid boy” costume of a bloodstained plaid shirt and a zombie mask, but this use of a character within a visual work falls within the realm of copyright, not trademark.) These failed to rise to the level of a Lanham Act violation as a matter of law.

Using Romero’s name on the disclaimer was a nominative fair use. Though disclaimers might be disfavored as ineffective in cases where confusion has been found, this was different, and easily satisfied the New Kids test. The court applied the Rogers v. Grimaldi test to the use of “Dead” in the title—it had artistic relevance and didn’t explicitly mislead as to source. Moreover, the shared use of one word and the idea of zombies awakening wasn’t enough to plead infringement—MKR was unable to claim that the word “Dead” alone identified it.

Nor was there a zombie head problem:

Comparing the packaging of Dawn of the Dead with Dead Rising … reveals no use of the zombie head design. The cover of Dawn of the Dead contains half a zombie head looking over a horizon. The half of the head that appears is white colored, cartoonish, bald, with a portion of the face covered in blood. By contrast, the front and back of the Dead Rising box contains a picture of the character Frank attacking numerous zombies. Of the many zombies displayed, there is one bald zombie on the bottom left corner of the front cover, but the full head and torso of the zombie is portrayed without any blood, and most of the head is shadowed. The zombie presented also appears to be much more lifelike than the half of the zombie head on the cover of Dawn of the Dead. This comparison, therefore, reveals that there simply is no basis for claiming that the zombie head design itself appears anywhere on the packaging of Dead Rising.

(I think this is descriptive fair use, but calling it that would have made it awfully hard for the court to kick out the claim on a motion to dismiss, though maybe sustainable under Iqbal/Twombly.)

The remaining state law counterclaims were also dismissed, either because they were identical to the Lanham Act claims or because they were preempted by the Copyright Act. (Weirdly, the court says the common law trademark infringement/dilution claims are preempted by the Lanham Act, an odd bobble since the Lanham Act only preempts state law dilution claims against registered marks; the discussion quotes case law saying that state law can’t be allowed to free confusing or deceptive trademarks to compete with federal trademark rights, which isn’t the issue here.)