## Facts

- Alexey L. Pajitnov created, named, and developed the video game *Tetris* while working for the Computer Center of the Academy of Sciences (CCAS), a Soviet government entity.
- Because Pajitnov was a Soviet citizen and employee, he could not commercially exploit the game; he assigned rights in *Tetris* to CCAS, believing the assignment lasted 10 years.
- CCAS transferred *Tetris* rights to V/O Electronorgtechnica (Soviet Elorg), the Soviet government export agency, to act as CCAS’s licensing agent for international transactions.
- Soviet Elorg granted Nintendo an exclusive license for five years to produce and distribute *Tetris* on video-game systems and required Nintendo to file U.S. trademark and copyright registrations in Soviet Elorg’s name.
- Around the time Nintendo’s license ended, the alleged 10-year term of Pajitnov’s original assignment also would have ended, and both Pajitnov and Soviet Elorg sought to take control of the *Tetris* property rights.
- Pajitnov entered into an exclusive licensing agreement with Bullet-Proof Software, a Japanese company associated with Henk Rogers, while Soviet Elorg continued to claim rights to *Tetris*.
- To address competing claims and monetize licensing, officers of Bullet-Proof Software and Soviet Elorg agreed to create The Tetris Company, L.L.C. (TTC), intended to combine the parties’ claimed rights and manage licensing revenue.
- Bullet-Proof Software formed Blue Planet Software, Inc. (BPS) to hold and manage Pajitnov-related interests, and Soviet Elorg formed Games International, LLC (Games) and related entities to participate in and manage TTC.
- The relationship broke down; BPS withdrew from the TTC arrangement, and the ownership dispute resumed, with both sides contacting licensees and asserting conflicting claims, creating confusion and harming the *Tetris* mark.
- BPS and Pajitnov sued Games and affiliated defendants in the Southern District of New York alleging copyright infringement, trademark infringement, and related claims; both sides filed cross-motions for preliminary injunctions to stop the other from interfering with asserted ownership and licensing rights.

## Issues

1. Whether plaintiffs showed irreparable harm and a likelihood of success (or serious questions plus a hardships balance strongly favoring them) sufficient to justify a preliminary injunction granting them effective control over *Tetris* copyrights and trademarks.
2. Whether defendants showed entitlement to preliminary injunctive relief, particularly whether defendants established exclusive *Tetris* merchandising rights by clear contract language despite broader uncertainty in the chain of title.
3. Whether the documentary record of the Soviet-era grants and later transactions was too ambiguous at the preliminary stage to support broad ownership-based injunctive relief for either side.

## Decision

- The court denied plaintiffs’ motion for a preliminary injunction.
- The court granted defendants’ motion in part and denied it in part.
- The court found that key documents bearing on overall ownership and the duration of the original assignment were conflicting and ambiguous, preventing plaintiffs from showing a sufficient likelihood of success for broad, ownership-based relief.
- The court found that the documents addressing merchandising rights were clear and did not contain the same ambiguity or time-limit questions, supporting defendants’ claim to exclusive merchandising rights.
- The court issued limited preliminary relief aimed at protecting defendants’ merchandising rights and reducing ongoing marketplace confusion, while leaving ultimate ownership of the broader *Tetris* copyrights and trademarks for later resolution.

## Legal Principles

- A preliminary injunction requires a showing of irreparable harm and either (a) likelihood of success on the merits or (b) sufficiently serious questions going to the merits and a balance of hardships tipping strongly toward the movant.
- When chain-of-title and assignment documents are materially ambiguous on core ownership questions, a court may deny broad preliminary relief that would effectively award interim control of disputed intellectual property.
- Even where broader ownership is uncertain, a court may grant narrower preliminary relief to protect a distinct set of rights that is supported by clear, unambiguous contractual language (such as exclusive merchandising rights).
- In intellectual property disputes where both sides’ communications to licensees create confusion and threaten the value of the mark, the court may tailor relief to limit harm without deciding contested title on an incomplete record.

## Conclusion

In *Blue Planet Software v. Games International*, the Southern District of New York denied plaintiffs’ request for a broad preliminary injunction because the documents governing the creation, assignment, and later transfers of *Tetris* rights were inconsistent and unclear on key ownership questions, but the court granted defendants limited preliminary relief after finding that defendants’ exclusive merchandising rights were established by clearer agreements, reserving broader copyright and trademark ownership for decision on a full merits record.


Blue Planet Software v. Games International, 334 F. Supp. 2d 425 (2004)