THE STORY OF UNIVERSAL versus NINTENDO: How we almost lost Donkey Kong.

Donkey_Kong_-_1981_-_Nintendo

Back in the early years of video games, there was a fierce competition over who will dominate the video game market. Unlike today where there are about three big contenders in the videogame industry, namely – Sony with their Playstation, Microsoft with their Xbox, and Nintendo with their Wii. But back in the day, the industry was teeming with gaming companies. Companies such as Atari, Coleco Vision, Vectrex, Tiger Electronics, LJN (God forbid), Sega, and of course Nintendo. However, most of these gaming companies went bankrupt or simply faded into obscurity.

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A typical Amusement Arcade in the 80s.

In 1981, the arcade scene was booming. Nintendo of Japan and its wholly owned subsidiary Nintendo of America, was taking over the gaming market with the sale of the extraordinarily successful video game known as “Donkey Kong”, which was the brainchild of Shigeru Miyamoto, also known for creating Super Mario Bros. and The Legend of Zelda.

Nintendo profited to around $180 million from the sale of approximately 60,000 video arcade machines in the United States and Canada. Despite this tremendous success, Nintendo remained to be a relatively small company.

Here comes a new challenger

During the 80s, Universal City Studios or Universal for short was a giant in the movie and music industry. Universal’s President, Sid Sheinberg, wanted to expand and enter the video gaming industry. Universal will soon use its alleged property rights over one popular Hollywood giant gorilla – King Kong.

The similarities between the great ape of the silver screen and Donkey Kong were somehow apparent to Sheinberg.

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(Left) 1976 remake of the movie King Kong (Right) Screen capture of the 1980s arcade game Donkey Kong.

These similarities will be taken advantage of by Universal to penetrate the highly lucrative video gaming industry. Sid Sheinberg took notice of Donkey Kong’s success in the arcade and home video game console market. He tested a round of Donkey Kong himself. After testing the game, he was convinced that Donkey Kong was a rip off of King Kong.

Universal demanded Nintendo to pay them royalties for its use of King Kong’s image to that of Donkey Kong. Nintendo, however, refused to pay. This infuriated Sid Sheinberg, for which he would famously tell Nintendo, “You’d better start saving money to pay your attorney’s fees, I view litigation as a profit center.”

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Thus, in 1982, Universal sued Nintendo for trademark infringement and unfair competition for its character Donkey Kong.

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Take note, 1980s Nintendo was not the powerhouse gaming company that we all know and presently love. It was a relatively small consumer electronics and software company. Little did it know that this case would be a landmark case that will establish Nintendo as a legitimate gaming company.

So, what exactly is a trademark infringement and unfair competition?

Imagine Coca-cola. The image that immediately comes to mind is their famous ribbon like script which says “Coca-Cola”. You call that a Trademark. A Trademark distinguishes your brand from the other competitors’ brands and it gives you exclusive rights to its use. Now imagine a similar soft drink company comes up with its own mark, but uses the exact same style as that of Coca-Cola – same lettering, same color, similar style, but is named “King-Cola”. Trademark infringement basically is copying another mark and using it for your own advantage, either to compete or simply to take advantage of your competitor brand’s popularity for your own benefit.

Cola

Unfair competition on the other hand simply means imitating a certain product where the seller deceives the public into buying his own goods making them appear as the real deal. In simple terms, it’s a knockoff. Class “A” products anyone?

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Is that Shrek?

Enter player 1! John Kirby

Nintendo hired a lawyer with the name of John Kirby to represent it during trial. It is believed by many that the popular Nintendo character “Kirby” was named in his honor, although Masahiro Sakurai, the creator of the character claims he does not remember how the name “Kirby” came to be.

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John Kirby

Nintendo’s internal legal counsel by the name of Howard Lincoln was not impressed by the looks of Kirby. He observed Kirby to be “dishevelled, and out of sorts.” Little did they know that this unassuming lawyer was a brilliant litigator.

Lincoln

Kirby was known to defend his clients tenaciously and adamantly and has won several cases concerning Intellectual Property Law. Lincoln and Kirby met with Nintendo of Japan’s president Hiroshi Yamauchi to discuss the merits of the Universal case. At the end of their meeting, Hiroshi stated, “We must win.”

Lincoln and Kirby also interviewed several of Nintendo’s staff, including Shigeru Miyamoto and Gunpei Yokoi, the creator of Gameboy. With all the information that they had, they flew back to the U.S to prepare for battle.

The battle begins

During trial, the judge actually had to play Donkey Kong and watch King Kong movies to determine if there were similarities between the two.  The Judge concluded that “the differences between them were great”, that the Donkey Kong game was “comical” and the Donkey Kong gorilla character was “farcical, childlike and nonsexual.” In contrast, the court described the King Kong character and story as “a ferocious gorilla in quest of a beautiful woman.” In summary, the court concluded that “Donkey Kong creates a totally different concept and feel from the drama of King Kong” and that at best, Donkey Kong was a parody of King Kong. If a mark is a parody of another mark, it is an exception to trademark infringement.

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But even more important than these conclusions from the judge, Nintendo discovered that Universal did not actually own King Kong because it didn’t really have any ownership over it. Nintendo also found out that Universal previously won another court case proving that King Kong was in public domain, which allowed Universal to use King Kong in its 1970s movie remake of the same name. This discovery along with the other arguments and conclusions by the Court made the case for Nintendo. Universal appealed their case up to the U.S Supreme Court seeking to overturn the trial court’s decision in favor of Nintendo, but was ultimately an exercise in futility. Nintendo was adjudged the winner of the case and was awarded an amount of $1.8 Million dollars.

Donkey Kong survived an untimely death. Were it not for the combined efforts of Nintendo’s staff and John Kirby, Donkey Kong would be a mere piece of history. The menacing ape went on to star in several games such as “Donkey Kong Country” for the Super Nintendo, “Super Smashbrothers” for the Nintendo 64, and numerous appearances in various titles.

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As for Nintendo’s lawyer John Kirby, Nintendo gave him a sailboat which was christened as “Donkey Kong.”

Special thanks to Norman Caruso a.k.a The Gaming Historian for some screenshots and for the inspiration to create this article.

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About the author:

Joel Enrico Santos is a litigation lawyer handling Civil, Criminal, Labor, Immigration, Transportation, Corporate, and Land Registration cases. He is an Associate Attorney with a Makati based lawfirm and is a solo practitioner handling cases on his own since April, 2013. He thinks Flat-Earth theory is interesting, but improbable… in this Universe.

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