When Universal City Studios sued Nintendo over Donkey Kong in June 1982, Nintendo of America’s lawyer Howard Lincoln flew to New York to find someone to fight it. He chose John Kirby of Mudge, Rose, Guthrie, Alexander & Ferdon. “When I initially met him, I wasn’t all that impressed,” Lincoln told the journalist David Sheff. “He was kind of disheveled looking and out of sorts. But it didn’t take long to figure out that this guy was one hell of a lawyer.” Kirby won the case, then won Nintendo’s counterclaims, and for the next decade he was the lawyer Nintendo called when someone threatened its business.
Fast facts
- Firm: Mudge, Rose, Guthrie, Alexander & Ferdon, New York.
- Before Nintendo: Sheff lists antitrust cases for PepsiCo and Warner-Lambert and franchise cases for General Foods.
- Best-known case: Universal City Studios v. Nintendo, 1982–86.
- Later work for Nintendo: the NES licence agreement, the fight with Atari Games and its Tengen label, the Tetris rights, the Federal Trade Commission’s price inquiry and Atari Corporation’s antitrust suit.
- Thank-you present: a 27-foot sailboat named Donkey Kong.
Two gorillas
Kirby and Lincoln went to Kyoto to meet Nintendo’s president, Hiroshi Yamauchi. “I have no liking for lawyers,” Yamauchi told them. They interviewed Gunpei Yokoi and Shigeru Miyamoto, then spent about ten months preparing the case. Kirby had Howard Phillips, a Nintendo of America warehouse manager, play Donkey Kong in court to show that it had nothing to do with the film.
Sheff tells the case as a public-domain story: in the 1970s Universal had won a court ruling that the name King Kong could not be a trademark, and now it was claiming the opposite. The court record is more precise. Judge Robert W. Sweet refused Nintendo’s argument that the old ruling bound Universal, because that ruling had been set aside when Universal settled with RKO. He dismissed Universal’s case in December 1983 on other grounds: Universal owned no valid King Kong trademark, the name had no secondary meaning, and nobody would confuse the two gorillas. The Court of Appeals upheld the dismissal in 1984 on the last ground alone.
Kirby then pressed Nintendo’s counterclaims, and Universal’s own files did the damage. In July 1985 Sweet found “direct evidence that Universal knew it did not have the rights it asserted in its complaint”, and made Universal pay Nintendo’s legal fees as punitive damages, plus lost royalties and costs. Sheff puts the total at $1.8 million. When Universal’s president, Sidney Sheinberg, gave evidence, Kirby asked him about MCA’s profits and then, according to Sheff, “What portion of your total operating income was contributed by your litigation profit center?” It was the phrase Lincoln remembered Sheinberg using over lunch in 1982. The Court of Appeals upheld the judgment in July 1986.
A sailboat called Donkey Kong
Minoru Arakawa and Lincoln took Kirby, his wife and some of his associates to dinner in a private room of a Manhattan restaurant. Afterwards they gave him a framed photograph of a $30,000, 27-foot sailboat. It had been christened Donkey Kong and came, they explained, with “exclusive worldwide rights to use the name for sailboats.”
Nintendo’s lawyer
The Universal case made Kirby Nintendo’s outside counsel. When Arakawa and Lincoln drew up the licence for outside publishers of NES games, whose restrictions were severe enough to worry Lincoln himself, Kirby researched the precedents and told Nintendo it could go ahead. The licence and its Seal of Quality are described in their own entry.
In January 1989, as Nintendo fought Atari Games’ unlicensed Tengen cartridges, Kirby wrote to Charles Lazarus, chairman of Toys “R” Us: “If your company handles products which infringe Nintendo’s patent or other intellectual property rights, Nintendo intends to avail itself of the full range of its legal remedies.” That April he travelled to Moscow with Lincoln to take evidence for the Tetris case; Sheff records that his shirts were stolen at Kennedy Airport and he had to buy polyester replacements from a street stall. In 1991 he advised Lincoln to meet the Federal Trade Commission, which led to the consent decree over Nintendo’s retail pricing. In May 1992 he defended Nintendo against Atari Corporation’s antitrust suit in San Francisco, and the jury found that Nintendo’s licensing programme had not harmed Atari.
Kirby the character
Nintendo’s pink hero Kirby first appeared in 1992, and the two names are often linked. Asked in 2011 whether the character was named after the lawyer, Miyamoto told Game Informer that he had met Kirby during the Universal case, but that the name had come from a list of candidates; the team found the coincidence funny, and liked the contrast between a harsh-sounding name and a soft, cute character. On his account the character was not named in the lawyer’s honour; the resemblance was a coincidence the team enjoyed.
Sources
- David Sheff, Game Over (1993; GamePress edition, 1999), chapter 6, “For a Fistful of Quarters”: Lincoln hiring Kirby and “one hell of a lawyer”; Kirby’s earlier clients; the Kyoto meeting and “I have no liking for lawyers”; the ten months of preparation; Howard Phillips in court; the public-domain account; the cross-examination of Sheinberg and “litigation profit center”; the $1.8 million; the dinner and the sailboat. Chapter 10, “Game Masters”: Kirby’s advice on the licence agreement. Chapter 11, “The Big Sleep”: the letter to Toys “R” Us of 24 January 1989. Chapter 12, “Game Over”: the FTC meeting and consent decree. Chapter 14: the Moscow trip. Chapter 16, “Borders”: the Atari Corporation verdict of 1 May 1992.
- Universal City Studios, Inc. v. Nintendo Co., Ltd., 578 F. Supp. 911 (S.D.N.Y., 22 December 1983): the estoppel argument rejected; the three grounds for dismissal. https://static.case.law/f-supp/578/cases/0911-01.json
- Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112 (2d Cir., 4 October 1984): dismissal affirmed on likelihood of confusion; counsel for the parties. https://static.case.law/f2d/746/cases/0112-01.json
- Universal City Studios, Inc. v. Nintendo Co., Ltd., 615 F. Supp. 838 (S.D.N.Y., 29 July 1985): “direct evidence that Universal knew”; the award of fees, royalties and costs. https://static.case.law/f-supp/615/cases/0838-01.json
- Universal City Studios, Inc. v. Nintendo Co., Ltd., 797 F.2d 70 (2d Cir., 15 July 1986): counterclaim judgment affirmed. https://static.case.law/f2d/797/cases/0070-01.json
- Tim Turi, “Miyamoto Talks Wii U, Zelda, And Nintendo’s Past”, Game Informer, 17 June 2011: Miyamoto on the name Kirby (web, secondary). https://www.gameinformer.com/b/features/archive/2011/06/17/miyamoto-wii-amp-wii-u-are-colored-white-for-all-ages-appeal.aspx
- Nintendo Life, 4 October 2019, and Video Games Chronicle, October 2019: his death aged 79 (web, secondary).