How Do Companies Build an Intellectual Property Portfolio?

A Mario-Focused Nintendo Case Study

It’s a Me, IP Portfolio-ooooooooo!


How does a company create an intellectual property portfolio?  Where do they start?  What do they protect?  It all starts with taking one Mario jump at a time.

In celebration of Mario Day and the upcoming Super Mario Bros. movie, let’s “a go” take a little peek into IP World 1-1, the Mario Bros. edition!  We are going to explore the different types of intellectual property that it takes to not only make the Mario Bros. saga, but also what it takes to play the Mario Bros. games.

You might be wondering what intellectual property (or “IP”) even is to begin with.  Well, IP relates to intangible rights to creations of the mind, which may sound ambiguous but turns out to be extremely valuable.  It allows you to create things where a person jumps onto little turtle creatures while riding a dinosaur before jumping into a green pipe and not be seen as weird.  We are going to touch on the four primary types of IP: copyrights, trademarks, patents, and trade secret – with a quick debrief of what each one protects.  Together, these primary types of IP unite to form an intellectual property portfolio.

As a note, it is always fun to peruse the latest filings for a company, particularly Nintendo.  So, if you have some extra time on a Friday night, enjoy the journey!


Super Copyright Bros.

To start, let’s visit copyrights, which protect creative works in a fixed form, such as music that is recorded or art that is painted onto canvas.  The beauty about copyrights is that the rights automatically occur once pen is to paper, so to speak.  There are increased rights once a copyright is filed with the U.S. Copyright Office.

As you can imagine, Nintendo has a ton of copyright filings.  Not surprisingly, the latest one is for The Super Mario Bros. Movie filed in January of this year (2023) – just in time for the worldwide release of the film!  This one is co-owned with Universal Studios, which makes sense since Illumination brought the movie to life…and Universal has a Nintendo-themed park! (Wahoo!)

Mario first made his appearance in the Donkey Kong games in 1981, which also happens to be the first year we see a U.S. registration under the Donkey Kong game.  The first mention of Mario is in 1983 for a Game & Watch Mario Bros. edition, which is apparently about a bottling plant.

Doing the math, that means that Nintendo has copyrights for Mario spanning 5 decades!  That really speaks to the longevity of the characters at the heart of such beloved games…jury is still out on the movies. (Don’t forget the live action movie starring John Leguizamo as Luigi and Bob Hoskins as Mario.)

As a final note, copyrights can also protect code, and in an infamous case between Atari and Nintendo in 1992, the court ruled that simply changing the language of the code but nothing more did not count as a new creative work.  There, Atari reverse engineered the code for Nintendo software, which was not an easy feat at the time. After reverse engineering the code, Atari then translated the code into a different language.  The end product was almost exactly the same, and the court agreed with Nintendo that Atari infringed on their copyright.


The Rainbow Road to Trademark Protection

Trademarks protect branding that indicates the source of a product or service.  Similar to the copyright side, the most recent trademark filing is for The Super Mario Bros. Movie for “entertainment services…in the nature of motion pictures.”  However, the future status of that may depend on whether the film becomes a series, as we discussed in a previous blog about trademarks and film titles!

A fun, yet perhaps unexpected trademark is for the coin sound that occurs when a character in the Mario Bros. games hits a coin block.  Can you hear it in your mind?  Yes, even sounds can be protected as a brand if the sound immediately evokes recognition of the source, which in this case is Nintendo.

Looking back to the oldest trademark application, Nintendo also filed for Mario Brothers on “ELECTRONIC AMUSEMENT APPARATUS ADAPTED FOR USE WITH TELEVISION RECEIVERS COIN OR COUNTER FEED VIDEO GAMING MACHINES PRINTED ELEC TRONIC CIRCUIT BOARDS ELECTRONIC MEMORY DEVICE TOYS PLAYTHINGSGAMES OTHER THAN ORDINARY PLAYING CARDS,” but they did not respond to an office action (which is when the U.S. Patent and Trademark Office comes back and says that they don’t immediately receive a trademark registration for some reason).  The file is so old that the office action is not digitally available, though, so it is difficult to know why it was rejected.  This one is clearly for the arcade game, since it accepted coins.

The oldest still active Mario trademark registration is for the “Mario Bros.” name relating to “Electronic Game Equipment with a Clock Function and Video Output Game Machines and Parts Therefor,” filed in 1983.  That is likely for the Game & Watch, since one of their first gaming inventions was for a “Timepiece Apparatus having a gaming function.”


Living in Patent Kingdom

Speaking of patents, which protect inventions by giving the holder a monopoly on the innovation for up to 20 years…  As you can imagine, Nintendo filed for patent protection for each round of hardware, which they still do to this day.  Since they have proprietary and unique hardware, this is hardly a surprise.  Nintendo makes it quite convenient to find their live patent registrations on their notice page, found here.

For older, expired patents, we can look to the 1970s and 1980s with one of their most prolific early inventors, Gunpei Yokoi.  As mentioned before, a “Timepiece Apparatus having a gaming function” from 1980 seems to be one of their earliest gaming hardware and eventually served as a mechanism for the first official Mario Bros. game.  This patent was paired with a series of other patents building out an entire thicket of protection, including a “Liquid Crystal Display Unit,” “Figure Displaying Game Apparatus,” and “Hand-held Type Electronic Game Housing,” “Hand-held game apparatus,” “Electronic game housing,” seemingly rounding out much of the functionality of the Game & Watch series.

It wasn’t until Masayuki Yukawa (in combination with many other inventors, still including Yokoi) that we see the old school (OG?) Nintendo Entertainment System (NES) Console emerge with some design patents for a “Game Cartridge for game machine” and “Video Game control unit” from 1985, which aligns with the Nintendo release date of the same year.  Design patents protect how the device looks, which explains why nothing on the market ever looked quite like the NES (or any of the Nintendo consoles for that matter, which all have a very distinct look).


Yoshi’s Cookie Recipe is a Trade Secret

Trade secrets protect valuable information that maintain that value by staying secret.  It is typically information that is tough to reverse engineer.  Companies work hard to keep this information secret, both internally and externally.

Because trade secrets are held so close to the suspenders, trade secret are largely speculative, unless they are released, leaked, or are the subject of a court case.  For example, release dates for consoles and games may be trade secret until they are made public, depending on how well protected those dates are.  There is a ton of value to the strategy of release dates, and companies are typically irate when they are leaked.

Strategy and business development are often the subject of trade secret, particularly since they cannot be reverse engineered, only guessed at.  Similarly, story lines and new games may be kept secret until a strategic release of the information when they lose their trade secret protection.


An Intellectual Property Star Road

As you may see, intellectual property may provide layered protection so that every aspect of a product may be protected, and we only scratched the surface of potential, leaving out names, images, and likeness, or trade dress, just to name a few other options out there that Nintendo has definitely leveraged.  Building a multi-factor IP portfolio didn’t happen overnight – hopefully these snippets into how one character could be used across an entire portfolio spurs some ideas.  Hope you enjoyed the adventure of Mario Bros. IP throughout the years!

While Nintendo may have had small beginnings as a physical card company, they started developing intellectual property in various ways.  They still leverage their intellectual property to this day, finding new ways to delight their audiences.  Whether that be the newest Mario game, or expanding into new territory like theme parks and film (well, a second try), these all had their humble beginnings in one product going back to the early 80s.  What are you working on that is going to stand the test of time?

Not sure where to start? Contacting an intellectual property attorney might be a great start to learn next steps. When it comes to protecting your intellectual property, our team at Wilson Dutra is committed to making the process as straightforward as possible. If you are ready to get started or wish to learn more, we encourage you to hit the box with the glowing star and contact our team today for a complimentary consultation.