The 1983 Universal vs Nintendo Lawsuit: How a Video Game Saved a Company and Named a Character

Using your opponent’s prior arguments to defeat them in court requires a certain level of legal audacity. It’s not very common. It’s usually decisive when it works. And in 1983, a lawyer by the name of John Kirby executed precisely that move on behalf of Nintendo, a then-small Japanese video game company, in a lower Manhattan federal courtroom. By doing so, Kirby may have saved the company’s entire American future.

Nine months after Nintendo began selling Donkey Kong in the US, the conflict started in April 1982. The famous giant ape’s trademark was allegedly violated by Nintendo’s barrel-rolling gorilla, according to a lawsuit filed by Universal City Studios, the home of King Kong merchandising rights. The timing was precise. Nintendo had already made over $180 million from about 60,000 arcade units of Donkey Kong, and an additional $8.5 million came from licensing agreements with businesses like Atari, Coleco, and Ruby-Spears. Donkey Kong had become a phenomenon. Universal took action after spotting a lucrative target. Nintendo’s licensees received letters from the company’s legal team requesting settlements. Many made payments. Instead of going to court, Atari, Coleco, and Ruby-Spears all consented to pay Universal royalties. As far as Universal was concerned, the plan was effective.

Kirby appears to have been overlooked by Universal. When Nintendo’s lawyer dug through the court file, he found something quietly devastating: Universal had previously been in court over King Kong, and in that case, Universal had successfully and vehemently argued that the King Kong story was in the public domain. In order to produce its own King Kong movie without paying the original creators, Universal had to prove that King Kong belonged to no one in the 1975–1981 lawsuit against RKO. That argument was won by Universal. The federal court in California concurred. The King Kong tale was in the public domain. After that, Universal built a $200,000 trademark acquisition on top of a character that it had just concluded no one owned.

IMPORTANT INFORMATION TABLE — UNIVERSAL CITY STUDIOS VS NINTENDO CO., LTD. (1983)

Kirby brought this history into the courtroom in New York and left it there. After carefully examining the earlier cases, Judge Robert W. Sweet concluded that Universal was unable to claim trademark rights that it had previously attempted to violate. Additionally, the court determined that there was no chance that consumers would legally confuse Donkey Kong with King Kong, regardless of any rights Universal may have claimed. A large gorilla, a captive woman, a male rescuer, and a tall structure were among the surface elements that the two properties had in common, but their “total concept and feel” were very different. King Kong was violent, tragic, and dramatic. Birthday cakes, umbrellas, and a humorous gorilla leaping up and down on pink girders were all featured in the absurd arcade game Donkey Kong. Judge Sweet compared the relationship to that between Superman and “The Greatest American Hero”—two characters that are fundamentally different but have superficially similar genre elements.

Universal’s argument was not strengthened by the survey they provided as proof of consumer confusion. In order to determine whether the game was created with the consent of the King Kong filmmakers, the company polled 150 arcade owners and managers who had already bought Donkey Kong machines. 18% of respondents said “yes.” The survey was deemed to have serious flaws by the court, including the use of an incorrect universe, a leading question, and references to movie images that Universal did not genuinely own. Neither Universal nor the creators of King Kong were mentioned when those same respondents were asked the open-ended question of who makes Donkey Kong. Nintendo’s argument was essentially validated by the survey.
The way the case completely reversed itself on Universal is almost poetic when viewed from the perspective of forty years. Prior to the main ruling, the studio had received millions from Nintendo’s licensees. It had wagered that a smaller business would eventually fail due to costly litigation. Rather, Nintendo sought summary judgment, prevailed on all counts, and then saw the court order Universal to reimburse Nintendo for its $1,142,545.70 in legal fees. In the end, the business that had attempted to profit from Nintendo’s success wrote a check to the parties it had sued.

A separate footnote was added to the proceedings by the origin story of Donkey Kong. Originally, Popeye, Bluto, and Olive Oyl—all licensed Popeye characters—were the focal point of the game’s design. In 1981, the team switched out the original designs for those characters—a carpenter named Mario and a humorous gorilla—after realizing that it was not technically possible to render those characters accurately on screen. The word for “stupid” or “goofy” in a Japanese-English dictionary translated to “donkey,” which the Japanese designers combined with “Kong,” which they understood to simply mean gorilla. This is how the name “Donkey Kong” originated. In a deposition, Shigeru Miyamoto insisted that he had not intentionally connected to King Kong during the design process. His responses, which circled around what he remembered and when, revealed nothing other than the existence of a gorilla known as Donkey Kong and Miyamoto’s prior exposure to King Kong films, as one journalist subsequently pointed out. It is up to the reader to decide whether the deposition was straightforward or evasive.

Following the verdict, John Kirby returned to his legal practice. Nintendo named their new round pink character after him, showing gratitude in the subtle way that successful outcomes typically result. The video game character Kirby made his debut in 1992 and went on to become one of Nintendo’s most enduring franchises by absorbing the skills of his adversaries. The attorney who maintained that a gorilla cannot have a trademark is still involved in licensing agreements that bring in money on several continents. He might think that’s funny. It’s the kind of outcome that the legal world seldom produces: a case with the correct outcome, the right parties paying the right fees, and a piece of intellectual property law that is still cited when someone tries to assert ownership of something that doesn’t quite belong to them.