KING KONG CAUSES NO CONSUMER CONFUSION

(This is an archived case summary)

Universal City Studios (“Universal”), claiming ownership of the trade-mark “King Kong”, sued Nintendo Co. Ltd. and Nintendo of America, Inc. (collectively “Nintendo”) on the grounds that Nintendo's “Donkey Kong” video game infringed Universal's rights with respect to the famous King Kong movies and the “King Kong” trade-mark.
The United States District Court for the Southern District of New York (578 F.Supp. 911), granted summary judgment in favour of Nintendo, which Universal appealed. The Court of Appeal held that (1) assuming that the “King Kong” trade-mark was valid and properly conveyed to Universal, and that the mark had secondary meaning, there was no likelihood of consumer confusion with the video game “Donkey Kong”; and (2) Universal had failed to establish a claim for injunctive relief under New York's anti-dilution statute.

No Likelihood Of Confusion
Universal did not claim ownership of the “King Kong” mark as a result of owning either the 1933 classic movie King Kong or the 1976 remake. Instead, Universal claimed ownership of the “King Kong” name and the King Kong character based on certain assignments from Richard Cooper, the son and heir of Merian C. Cooper (who created the story that was the basis for the King Kong book and magazine serial). Essentially, Universal claimed to own a trade-mark in an extraordinarily large gorilla standing on top of a tall building holding a woman captive. The “Donkey Kong” video arcade game requires the player to manipulate “Jump Man” (later known as “Mario”, Nintendo’s most famous trademark) past obstacles and up a series of ramps on a structure, at the top of which stands a large gorilla holding a “pretty girl”.

The Court of Appeal held that there was no likelihood of consumer confusion between King Kong and “Donkey Kong” even though the two properties had in common a gorilla, a captive woman, a male rescuer and a building. The two characters and stories were sufficiently different and there was no evidence of actual confusion.

The Court stated that the key question in a trade-mark action is whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or even simply confused, as to the source of the goods in question. There will be confusion if the public believes that the mark's owner sponsored or otherwise approved the use of the infringing trade-mark. The Court considered various factors when determining the likelihood of confusion, including the strength of each mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, the defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers.

The Court of Appeal agreed with the lower court's decision, which found the “Donkey Kong” game “comical” and the “Donkey Kong” gorilla character “farcical, childlike and nonsexual”. It described the King Kong character and story as “a ferocious gorilla in quest of a beautiful woman.” The court summarized that “Donkey Kong”... create[s] a totally different concept and feel from the drama of King Kong” and that “[a]t best, “Donkey Kong” is a parody of King Kong.” The Court of Appeal found that “Donkey Kong” obviously parodies the King Kong theme” and this “strongly” contributed to the lack of any consumer confusion.

Universal argued that the two names, if not the characters themselves, were so similar as to create confusion. The Court disagreed, stating that “each trade-mark must be compared in its entirety; juxtaposing fragments of each mark does not demonstrate whether the marks as a whole are confusingly similar.” Nintendo's use of the prefix “Donkey” had no similarity in meaning or sound to the word “King”, and therefore “Donkey Kong” did not evoke or suggest the name “King Kong”.

Since the two properties were very different, Universal's claim could not stand without some indication of actual confusion or survey evidence showing that consumers would be confused. Universal relied on a telephone survey of 150 arcade, bowling alley and pizza parlour owners and managers who had purchased or leased one or more “Donkey Kong” games. While the Court stated that a survey could be used to indicate the existence of confusion, the Court found the survey in question to be so badly flawed as to be of little use.

No Dilution Of The Mark
New York's anti-dilution statute provides:

Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.

In order to obtain injunctive relief under N.Y. Gen. Bus. Law § 360-l, an owner of a trade-mark need not show a likelihood of confusion as to source, but rather must possess a strong mark and must demonstrate a likelihood of dilution of the mark. In this case, Universal failed to establish a claim for injunctive relief under the New York anti-dilution statute because there was no evidence that a video game named “Donkey Kong” would have an adverse effect on the reputation of the “King Kong” trade-mark or deprive the mark of its distinctiveness.

As a result, the Court of Appeal found that there was no trade-mark infringement or dilution.

Universal City Studios, Inc. v. Nintendo Company Ltd., and Nintendo of America, Inc.
1984, US. Court of Appeals, 2nd Cir.
746 F. 2d 112
KEYWORDS: trademark infringement - license - King Kong - confusion
SUMMARY BY: Arsen Krekovic