Deconstructing Konami vs. Roxor

*Please note: I am not a lawyer.*

Big news hit the Bemani world yesterday, as Konami filed a 16 page patent suit in Texas against Roxor Games.

Konami, as most of the world knows by now, are the creators of the very popular Dance Dance Revolution (or DDR) video game series. While DDR was hugely successful in Japan in the arcades and has seen large success at home over the last few years, the series has been unofficially on hiatus since the end of 2002, when the last Japanese arcade version was produce. Players differ in opinion as to what exactly represents a hiatus – Konami continues to make home versions, particularly for the US where only one legal arcade mix was created – but many players realize that without constant new versions in the arcade, their interest in the game was diminshed.

In the last two years, one of the many DDR simulator programs – Stepmania – was spun off into an attempted commercial project called In The Groove (or ITG). Available as a PC setup called a “BoXoR” (as in “*RoXoR BoXoR*”; I will refer to them as “kits”), In The Groove raised eyebrows during its introduction to the marketplace as it required to be plugged into an existing DDR arcade machine to be used. People representing the project, as well as fans, hail ITG as a game designed for fans of the dancing game genre.

Konami’s attempt to get an injunction comes just days before the release of the home version of In The Groove, produced in conjunction with Red Octane, arguably the most successful dance pad maker in the US. The court filings, available in PDF form from DDR Freak, include seven separate counts that Konami is seeking damages for.

There seems to be a lot of confusion in the community about what the exact point of the filing is, and what it means for DDR and ITG in the future. So, I’ll try my best to break it down to easy to digest portions. Click through for my deconstruction and analysis of the claims.

**Count I: Patent Infringement**

Konami filed Patent #6,410,835, entitled “Dance game apparatus and step-on base for dance game”, on July 24th, 1998 in Japan, and on February 1, 2001 in the US. The patent was granted in the US on June 25th, 2002. The abstract reads as follows:

>”Rhythm sensations can be represented in time to music by using the entire body and to create powerfulness and rhythm sensations. Stepping position indication data which is set by a rhythm setting section is read from a stepping position indication data memory, and the stepping position instruction contents are scrolled and displayed on a monitor by a scroll display control section, thereby performing instructions of the stepping position and the stepping operation timing. When the fact that a player steps on a step-on base section in accordance with the display contents of the monitor is detected by a cable switch and this is input from a stepping operation monitor section, a score proportional to the timing deviation is calculated by an amount-of-deviation detection/totaling section, and next, an evaluation is performed by the rhythm setting section. Then, the next stepping position indication data is set according to the evaluation result.”

(The entirity of the patent is worth reading, as it’s a fascinating deconstruction of the dancing game genre; it also includes gems such as “According to the present invention, it is possible to provide a game having powerfulness, in which rhythm sensations are increased further.”)

Konami’s claim is that Roxor has been and continues to infringe on this patent by manufacturing their product.

*Analysis*: Unfortunately for Roxor, their game is not dissimilar enough from DDR to escape what is likely to be an easy judgement here.

**Count II: Trademark Infringement in Violation of Lanham Act**

This claim references Konami’s trademark ownership, including Trademark #2,339,276, the one specific to DDR. Konami’s claim is that the ITG kits contain materials to be put over their trademarks, but purchasers often fail to cover Konami’s marks and thus consumers are mislead. Konami also argues that since Roxor targets a similar consumer base as DDR and markets their game in the same channels as DDR, consumers are likely confused and thus damages Konami.

*Analysis*: While many players have pointed out that it’s not Roxor’s fault if arcade owners fail to effectively deploy the kits, Konami is citing the Lanham Act, specifically section 32, which defines an infringer as (boldface mine):

>”…any person who shall, without the consent of the registrant – use in commerce any reproduction, counterfeit, copy, or **colorable imitation of a registered mark** in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which **such use is likely to cause confusion, or to cause mistake, or to deceive**…”

I don’t expect it would be difficult for Konami to prove that ITG provides a confusing experience for consumers, and as ITG is inarguably a “colorable imitation” of the registered mark, I am expecting this claim to go to Konami as well.

Interesting aside: The filing says that Konami has used the DDR Mark in the US as early as November 1998. I don’t recall exactly when DDR USA came out in the arcades, but I’m rather sure it wasn’t at that point. I’d be interested to find exactly how Konami used the mark in the US at that point.

**Count III: False Designation of Origin, False Description, False Advertising and Unfair Competition In Violation of the Lanham Act**
This count essentially duplicates the previous facts from Count 2, and claims that consumers will be confused as to the origin of ITG, believing that Konami has produced it. This sites Section 43(a) of the Lanham Act, which defines false designations of origins as goods or services that:

>”…is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person…”

*Analysis*: This falls similarly to the last count; if consumers are confused about the difference between DDR and ITG, they will likely also be confused as to the origin. This may not be a hard claim for Konami to justify.

**Count IV: Trademark Dilution in Violation of the Langham Act**

Another Langham Act claim, this deals with the dilution of “distinctive and famous marks”. If you have a very distinctive and/or famous trademark, you’re allowed extra protection from infringment and dilution.

*Analysis*: While I expect this to go in a similar manner to the previous claims, as the DDR trademark is undoubtedly recognized as being distinctive and famous, there is a tiny sliver here for Roxor. The courts must consider eight factors in deciding this, and one includes “the duration and extent of use of the mark in connection with the goods or services with which the mark is used”. If, by some miracle, Roxor can prove at this point that Konami has effectively discarded the famousness of the trademark, they could potentially escape this count. Of course, given that Konami has continued to make games over the last year for home consoles, and continue to work on new games, this is nigh impossible.

**Count V: Trade Dress Infringment**

Trade dress is commonly referred to as “look and feel”; Konami’s trade dress includes, but is not limited to:

>”the overall appearance of the DDR game, the DDR game’s dance platform and rails, and the DDR game’s speaker and light arrangements.”

Essentially, the trade dress consists of the “non-functional” features of the product (their words, not mine). Konami again claims that due to the refitting of existing DDR cabinets – embodying Konami’s trade dress, with an ITG circuit board – their trade dress is being used to contribute to the infringement previously detailed.

*Analysis*: Pretty open and shut; the dance platform, to the best of my knowledge, is not modified when an arcade owner changes a machine to ITG. The lights and speakers also remain untouched. The game does have some visual differences, but even proving this, one out of three is unlikely to save Roxor here.

**Count VI: Injury to Business Repuatation and Unfair Competition Under Texas Law**

This count references Texas Business & Commerce Code, Chapter 16. Specifically:

>”A person may bring an action to enjoin an act likely to injure a business reputation or to dilute the distinctive quality
of a mark registered under this chapter or Title 15, U.S.C., or a mark or trade name valid at common law, regardless of whether there
is competition between the parties or confusion as to the source of
goods or services.”

Under Texas law, any company can file against any act that may injure a business’ reputation, regardless of whether or not there’s competition or marketplace confusion. This is an easy extra count in conjunction with any of the previous four.

**Count VII: Trademark Dilution Under Texas Law**

Using the same section of code as the previous claim, this asks for damages for the trademark dilution under count IV, only this time under Texas law.

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***Bringing It All Together***

*The Arcade vs. Home Question*

There was much consternation at the news of the filing, wondering if this suit was against the arcade version or the home version. While a number of these counts hinge primarily on the arcade versions for making the case, there are some that certainly cover the home version. I would draw attention to Count II, statement 27, which references the sharing of target markets and marketing channels – including those for the home game market.

Perhaps if In The Groove had never become an arcade game, and had only generated a home version, many of these claims would be in a less dominating position. (Of course, an arcade game that didn’t use existing Konami cabinets would have been an equally useful move.) But as it stands right now, the case focuses on both the arcade and home version – and as we’ll see in the next section, Konami is out to stop both.

*Relief Requested*

The damages requested by Konami, while probably not far from the norm of what these cases entail, include some interesting clauses. The relief sought includes the following somewhat mundane items:

– Damages to compensate for the alleged infringement
– Treble damages for the willful and deliberate acts that Konami claims Roxor has committed. Treble damages is triple the amount the court would find them entitled to for just the infringement.
– Damages to compensate for the damage suffered to Konami’s reputation, goodwill, and trademarks.
– Costs, disbursements, and attorney’s fees
– Prohibition of anyone involved with Roxor from developing, producing, selling, using, or distributing any product designed to infringe on or inducing the infringing on the patent.
– Accounting for the profits that Roxor makes, and damages for such.
– Treble damages for the profits.

And right smack dab in the middle are two *very* interesting types of relief Konami is seeking. I’ll include them verbatim:

> Defendant be ordered to deliver for destruction: (1) all advertising circulars, signs, prints, packages, labels or any other materials in the possession or under the control of Defendant used in connection with the distribution, advertising, sale or offer to sell of Defendant’s goods bearing or incorporating Plaintiff’s Marks or Plaintiff’s Trade Dress, or marks or trade dress that are confusingly similar; and (2) all such products or materials bearing or displaying marks confusingly similar to the products advertised, provided, sold and/or distributed by Plaintiff;

This section is interesting because this covers all the materials that would directly infringe. And then, we get this (boldface is mine):

> Defendant and their officers, agents, employees, or representatives, and all persons with privity with Defendant not destroy but deliver up this Court all: letterheads, advertising materials, ***computer programs***, labels, packages, containers, name plates, magazines and any other printed matter of any nature and of any products in its possession bearing Plaintiff’s Marks or confusing similar or colorably imitative marks **for the purpose of destruction thereof**;

Before I say the following, let me restate: **I am not a lawyer. I may be reading this entirely wrong.** But…

My understanding of this passage says that *if* Konami wins *and* receives all damages they seek, all computer programs relating to ITG must be turned over. As ITG is so heavily based in it, this *may* include Stepmania.

While I personally hope that the case is not as far reaching as that – the effects of the Stepmania project disbanding would have effects on a number of other dance game projects, such as Neon FM – it would not surprise me if it comes to that point.
All in all, the case itself may not be that interesting; it will likely be open and shut in Konami’s favor unless Roxor can find a miracle. The damages, homever, will be worth watching for – and also to see if an injunction is granted before ITG hits the home market. Stay tuned.