Friday, September 11, 2015

Donkey Kong-flict: How Nintendo Kept Their First Star Character

The law is a very stoic profession, overall. Sure, the occasional lawyer goes completely bonkers and it makes the news (cocaine's a hell of a drug, as they say), but the actual written things that make up the law are dry and functional. That's why it's so important to savor those precious moments when I can watch a major corporation trying to throw their weight around only to faceplant in manure, wet themselves, and spontaneously catch fire. Some self-destruction is so delicious I am willing to push through page after page of opinion on things that aren't the reason why the judge comes to their conclusion.

I'll always give you guys the original material when I can but be warned that today's case, Universal City Studios v. Nintendo Co. from 1983, is pretty hard to get through once you get a couple paragraphs in. The opening line, "This is a dispute over two gorillas" from Judge Sweet, makes it seem promising, but eventually the extent of Universal's screw up in trying to bring this case just drags it all down. Luckily for me, I don't have to make new law, so I can sit here and Nelson laugh my way through an explanation of how Nintendo got to keep using the name "Donkey Kong" through no fault of their own.

The two gorillas Judge Sweet is talking about are King Kong and Donkey Kong. The 1933 movie "King Kong" by RKO studios was based on a book co-authored by Merian Cooper who also wrote the 1933 movie screenplay. RKO owned that specific movie, Cooper owned the book, and that's the last time the rights to King Kong were ever clear cut. The 1970s made a mess out of them. It started when Universal tried to do a remake of the 1933 movie on its own without buying any rights from RKO. Dino DeLaurentis had gone through the trouble of buying rights to a remake from RKO, and Universal took them to court because the market does not need two competing King Kong remakes set in the 1970s. Universal stamped their feet and said that the copyright on the book-version of King Kong hadn't been renewed, placing the story into the public domain for anyone to use. 

Pay attention to this part, because it's where they place the banana peel on the ground that they will trip over later.

At the end of a stupid amount of litigation and out of court settlement, King Kong had essentially been split between three camps: RKO, Cooper's estate, and Universal. Cooper held the rights to the 1933 movie, RKO had the right to make money off the 1933 movie as a trustee for Cooper, Universal was able to swing it's moneybags around to buy an assignment of all those rights Cooper had won, and the judge agreed that the book-based story of King Kong was mostly in the public domain. Later on, when RKO went into bankruptcy, it still had its little slice of Kong rights, but Universal didn't bother buying them out. With their last competitor for King Kong dominance dead, Universal surely owned the entire trademark! 

My actual notes while I was working on this article.
It's never a good sign for your brand when someone needs a flow chart to figure out who owns what.
It's complicated and messy, but the important take-away is that Universal started with no rights to a movie character called "King Kong," sued a bunch of people who did, argued that the thing they wanted to own was supposed to be free, paid off or waited for the demise of the people who had the thing they wanted, and walked away with something that looked like rights to the movie character King Kong. Money is magical pixie dust that way. 

By the early 80s, Universal City Studios was confident that they were the sole owners of the trademark "King Kong." So confident, in fact, that they sued this up and coming Japanese video game company called Nintendo, alleging that Nintendo's hit arcade and handheld game "Donkey Kong" was diluting the distinctiveness of their King Kong brand. You know, the one they bought after suing the people who had the thing they wanted.

"Dilution" is another harm that can be used as a cause of action by holders of a trademark when they defend their mark in court, either in the alternative to or right alongside claims of consumer confusion. The argument for dilution is that someone else comes out with a product with a name that is close enough to your mark that people stop associating that mark with your brand. I think the best example of this is with the boom of knockoff "i"-gizmos in the early 00s. Apple released the iPod and suddenly that lower-case letter "i" was in front of everything that wanted to be associated with cutting edge technology and/or shiny white plastic. The lower-case "i" was diluted to the point where it was associated more with knockoffs or jokes than it was with Apple. Why do you think it's called the "Apple Watch" instead of "iWatch?"

It's a real mystery why anyone would want to distance
themselves from innovation like the iCooler.
The thing about arguing dilution is that you have to actually own that famous mark you're saying people are watering down. Why do you think so many of those iGizmos got to stick around? Because Apple can't say that it owns a lower-case letter in front of another word. Why did Nintendo get to keep calling their gorilla who sits on top of a building holding a lady hostage while a hero tries to rescue her a "Kong?" Because Universal was never right when it said it owned King Kong.

Before I go further, I want to point out that the crashing and burning Universal faced after this was 100% its own fault. Nintendo really did not help their own case. Every legal strategy they tried was either based on out of court settlements, which don't count as precedent, or barely relevant case law. Its own employees weren't much help either since Shigeru Miyamoto flat out said under oath that he called his gorilla character "King Kong" all throughout the development stage. That's not helpful! Sure, it's true, but still! Not helpful!

And now for the part where Universal shoots itself in the foot. In their rush to fight anyone and everyone over the rights to a fictional gorilla from the 1930s, Universal forgot about that part where they put the story of King Kong into the public domain. The basic story of King Kong (monkey meets lady, monkey takes lady up on building) is not part of any trademark Universal can hold. You cannot trademark a general concept. Let me repeat that using the court's words:

"Trademark rights do not exist in the abstract, to be bought and sold as a distinct asset. They exist only in connection with a business or a product and can be transferred only along with that product or business or its goodwill."

So whatever the hell Universal spent all that time and money on, it wasn't the King Kong concept. At most, they could have bought the rights to the specific character from the movie King Kong, but even that falls short because it's not solid enough to hang a trademark on. You can't trademark something that you can't even really identify. Judge Sweet points out that so many versions of King Kong had been made which were all visually distinct from one another that there is no single image in a consumer's mind when they thought of King Kong. This "fatal vagueness" means that there was never a trademark at all for Universal to bully people out of. In the 1930s there was a gorilla holding a woman on the Empire State Building in a movie, and the representation of that specific gorilla holding that specific woman on that building can be trademarked, but there have been too many gorilla/woman/building situations since then for us to say what the definitive version of it is. 

Pictured: A generic Google Image search of "King Kong."
Do you associate any of these specifically with Universal?
Neither did the court system.
So Universal had nothing. It's not legally possible to assert rights to an entire concept like the gorilla/woman/building one we're talking about here, and nothing that Universal had done with the character of King Kong over the years had established that their big gorilla was synonymous with the "King Kong" story in the public's mind. Besides, Universal, you wanted that story to be public domain back when you decided out of nowhere that you were going to make your own King Kong movie with blackjack and hookers after losing out to Giada De Laurentiis' grandfather for the official remake rights. You got your wish! And now your gorilla is just a gorilla. Can't accuse someone of diluting the purity of your famous trademark if you don't have one! And you never did, Universal.

Nintendo keeps Donkey Kong, all that underhanded legal maneuvering of the 1970s has officially blown up in Universal's face, and I get a delicious rush of schadenfreude with my morning tea. Nintendo may not have needed to do much to keep its Kong, but I think I'll be using a future article to explain how they are doing so much right when it comes to keeping the stuff they do have trademarked under control.

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