## Facts

- Universal claimed trademark rights in the name, character, and story of *King Kong* based on historical exploitation and asserted transfers of rights.
- Universal had previously taken the position in earlier litigation that *King Kong* story and characters were in the public domain, which Nintendo argued undermined Universal’s current ownership claims.
- Nintendo designed and sold the arcade video game *Donkey Kong*, featuring a humorous gorilla character, a captive woman, and a hero attempting a rescue.
- *Donkey Kong* achieved substantial commercial success through sales of arcade machines and related exploitation.
- Universal alleged Nintendo’s use of “Donkey Kong” and related imagery falsely suggested association with *King Kong*, diluted Universal’s mark, and constituted unfair competition; Universal relied in part on survey evidence.
- Nintendo denied infringement and contended the works were distinct in name, appearance, and tone and that Universal’s asserted rights were weak or nonexistent.

## Issues

1. Whether Universal possessed protectable and sufficiently broad trademark rights in *King Kong* that could reach Nintendo’s use of *Donkey Kong*.
2. Whether Nintendo’s use of “Donkey Kong” was likely to cause consumer confusion as to source, sponsorship, or affiliation under Lanham Act § 43(a).
3. Whether Universal could establish dilution or unfair competition under New York law based on Nintendo’s use.
4. Whether Universal’s prior public-domain position regarding *King Kong* weakened or limited its present trademark claims.

## Decision

- The Second Circuit affirmed summary judgment for Nintendo.
- The court held Universal failed to show it owned exclusive trademark rights in *King Kong* with scope broad enough to cover Nintendo’s use.
- Even assuming some protectable interest, Universal failed as a matter of law to raise a triable issue of likelihood of confusion under the Polaroid factors.
- Universal’s New York dilution and common-law unfair competition claims failed for similar reasons.

## Legal Principles

- A plaintiff asserting infringement under Lanham Act § 43(a) must show a protectable mark and a likelihood of consumer confusion as to source, sponsorship, or affiliation.
- Likelihood of confusion in the Second Circuit is evaluated under the Polaroid multi-factor test, including mark strength, similarity, product proximity, and evidence of actual confusion.
- Differences in overall commercial impression—including name, visual presentation, and tone—can defeat confusion even where works share general themes.
- Survey evidence must be methodologically reliable to create a genuine dispute of material fact on actual confusion.
- Dilution and unfair competition claims under New York law generally require a distinctive mark and a showing of likely harm (such as blurring, tarnishment, or misappropriation) not established by weak marks and speculative association.

## Conclusion

The court concluded that Universal could not use trademark law to control generic “giant ape” themes or extract rights broader than any protectable *King Kong* mark, and that *Donkey Kong*’s distinct name, presentation, and humorous tone—combined with unreliable confusion evidence—required judgment for Nintendo.


Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112 (2d Cir. 1984)