Football, Firearms, and Fair Use: The law of Third Party IP
in Video Games
David Youssefi
Arvind Iyengar
In the early days of video gaming, games like Pong and Galaga consisted of a few pixels
bouncing around on a screen, but games have come a long way since then. A modern video
game is a cinematic experience, with staggering graphics and sounds that can transport a player
to their setting with shocking effectiveness. As video games have developed as a medium,
increased graphical fidelity and player immersion has caused developers to seek greater
verisimilitude. Indeed, many would consider a review or discussion of a modern game entirely
incomplete without discussion of graphics quality. In the modern video game market, ‘realism’
has become a near perquisite for high budget so called “AAA” games.
But realism in games means more than merely packing in more pixels. As graphics in
games have improved, so to art design in many games has moved closer and closer to
representing elements of our reality. The BFG of Doom has been replaced with the M-16 of
CounterStrike Go, The 2d mono-color sprite of Tecmo Bowl has been replaced with Rob
Gronkowski in Madden NFL ’17, and the barely visible bike of Excitebike has found itself
supplanted by the immaculately rendered Aston Martin Vantage GT3 in Project Cars. Along
with this increased realism (to make no mention of increased revenues) has come the risk that
game developers and publishers may find themselves on the wrong side of an intellectual
property infringement suit.
As a threshold matter, there are occasions where the need for a license should be
relatively obvious. Beenox cannot make their The Amazing Spiderman game without a license
from Marvel, Electronic Arts needs a license to include the name and logo of the National
Hockey League in their NHL 2017, and Activision needs a license for its 2016 Ghostbusters
game. These examples clearly employ a bevy of trademarked names, logos, and characters, and
as such it should be fairly clear that the publishers of these games need a license from the
trademark holder before the games can be made available for sale. But not all implementations
of third party IP in a game are so clear. In the space between these clearly licensed offerings,
and a wholly novel video game work, lies a grey area where it may not be immediately obvious
what the legal status of a video game asset really is.
The following article seeks to provide a brief summary of the legal framework
surrounding the appearance of third party intellectual property in video games. While this is a
rapidly developing field of law, the major categories of infringement assertion and defense have
begun to form in recent years. As such, this examination begins with a consideration of the place
of trademarks in videogames, followed by discussion of the publicity rights of individuals, and
finally concluding with some of the less common intellectual property issues that may arise as
the field continues to mature.
Trademarks and Video Games
Traditionally, trademarks are intended to prevent market confusion between competitor
products. For example, Xerox may use their trademark to prevent HP from marketing a copy
machine which relies on the reputation of the Xerox brand to sell units. This traditional directcompetition model puts the question of third party marks appearing in a video game in
something of a tricky place. Unlike the most typical trademark infringement case, third party
marks in video games can extend much further afield than confusion between similarly titled
video games, to controversies over art assets and in-game text. Often, a mark will only comprise
a small portion of the total art assets that make up a game, or will only appear under specific
game and input conditions. When an asset in a game is arguably similar to a protected mark, the
game’s publisher must determine whether their use will fall into one of the carved out
permissible uses: free use and artistic speech as protected under the first amendment.
The First Amendment Defense
First, video games benefit from the longstanding first amendment defense to Trademark
infringement. However, assertion of first amendment protections presupposes the answer to a
threshold question: are videogames artistic works entitled to the robust protections of the first
amendment? The Supreme Court answered that question relatively recently in Brown v.
Entertainment Merchants Ass’n, 564 U.S. 786 (2011). In that case, a group of video game
publishers brought a declaratory judgment action against the State of California, seeking to
invalidate a new law which attempted to restrict the sale of violent video games to minors. 1 The
law would have imposed strict labeling and identification requirements before retailers or
publishers could sell a game that was deemed “violent.” 2 The EMA sued and achieved an
injunction of enforcement of the law. The State of California thereafter appealed to the 9th
circuit, lost, and were granted certiorari in their appeal to the Supreme Court. 3
In finding in favor of the EMA, the Court held that video games are entitled to the same
first amendment protections as other artistic media, stating that “Like the protected books, plays,
and movies that preceded them, video games communicate ideas – and even social messages –
through many familiar literary devices (such as characters, dialogue, plot, and music) and
through features distinctive to the medium (such as the player’s interaction with the virtual
world) that suffices to confer First Amendment protection.” 4
Of course, the fact that video games are entitled to first amendment protections is not a
blanket license to infringe trademarks. Therefore, the next step in the inquiry must be to
ascertain the line between artistic expression and impermissible appropriation of trademark
rights. In order to determine this line, at least some courts have relied on the so called Rogers
test. 5 Deriving from Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the Rogers test involves a
1
Brown v. Entertainment Merchants Ass’n, 564 U.S. 786 (2011).
Id.
3
Id.
4
Brown, 564 U.S. at 790.
5
E.S.S. Entertainment 2000, Inc v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir, 2008) (“Rockstar’s second
defense asks us to consider the intersection of trademark law and the First Amendment. The road is well traveled.
We have adopted the Second Circuit’s approach from Rogers v. Grimali…”)
2
two part inquiry: First, an artistic work’s use of a trademark is not actionable under the Lanham
Act “unless the use has no artistic relevance to the underlying work whatsoever” 6. Second, such
a use is not actionable if, even having artistic relevance, “unless it explicitly misleads as to the
source or the content of the work.” 7
To understand how the Rogers test may be applied in the context of video games, the 9th
Circuit’s holding in E.S.S. Entertainment 2000 v. Rock Star Videos, Inc. is instructive. That case
concerned Rockstar Games, Inc’s Grand Theft Auto series, and particularly Grand Theft Auto:
San Andreas (“GTA”). 8 The game takes place,
in part, in the explicitly fictional city of “Los
Santos” which is intended to mimic the feel and
appearance of the real city of Los Angeles. 9 In
order to achieve this effect, the game artists
drew on reference photographs of the city of
LA that they felt evoked the theme of the
The Pig Pen in GTA: San Andreas and the Play Pen in Los Angeles
city. 10 From these photographs artists created
a number of buildings and neighborhoods,
including the “Pig Pen” strip club located in “East Los Santos.” 11 Following the publication of
the game, E.S.S. Entertainment asserted that the “Pig Pen” in GTA improperly appropriated their
trademark on the “Play Pen” Gentleman’s Club in downtown Los Angeles. 12
Applying the Rogers test, ESS contended that the inclusion of the “Pig Pen” did not
contribute any artistic relevance because the Play Pen is not a cultural icon and because GTA as
a game is not substantially about the Play Pen. 13 The Court did not find these assertions
persuasive. 14 Instead, the court found that the look and feel of East LA generally was relevant to
Rockstar’s artistic goals in the GTA games, and as such, the inclusion of each similar building in
that neighborhood had greater than zero artistic relevance in that their inclusion contributed to
the overall feel of the game world. 15 Having found at least some artistic relevance, the Court
turned to the second prong. 16 While ESS alleged that the use of the “Pig Pen” in GTA misled the
public as to the source of the game, the Court once again disagreed. 17 The court held that there
was no likelihood of confusion because video games and strip clubs are not particularly related
markets and because there is no reason to think the public would believe that ESS had created or
6
Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)
Id.
8
E.S.S. Entertainment 2000, Inc v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir, 2008)
9
Id.
10
Id.
11
Id.
12
Id.
13
Id.
14
Id.
15
Id.
16
Id.
17
Id.
7
provided expertise or support in creating the GTA video game. 18 As such, the Court denied
ESS’s trademark claims and upheld the dismissal of their case against Rockstar. 19
Much the same result adhered in Rebellion Developments Ltd. v. Stardock Entertainment,
Inc., 107 U.S.P.Q.2d 2160 (E.D. Mich). In that case, Rebellion brought a Lanham Act claim
against Stardock based on the use of the word “Rebellion” in the title of their game “Sins of a
Solar Empire: Rebellion.” 20 Acknowledging that the first part of the Rogers test sets a low
threshold, the court found that the word “rebellion” had artistic relevance to Stardock’s game,
because the game allowed players to choose between aligning with ‘loyalist’ or ‘rebel’ factions
in a sci-fi civil war setting. 21 Thereafter, the court moved to consider the second prong of the
test, where Rebellion Developments contended that the presence of the word Rebellion in the
title of the game would mislead consumers as to the plaintiff’s involvement with the game. 22 In
dismissing this assertion, the court explicitly disregarded evidence regarding likelihood of
consumer confusion, and found instead that “because the Rogers test governs this dispute, factors
that might establish likelihood of confusion – such as Defendants’ intent – are irrelevant.
Nothing on the face of the pleadings indicate that Defendants engaged in overt misrepresentation
by using the term Rebellion in the title of their computer game.” 23 In so doing, the court made
clear that a possibility of consumer confusion is insufficient to satisfy the test under Rogers, a
plaintiff must further demonstrate that the defendants actually misled potential customers.
18
Id.
Id.
20
Rebellion Developments Ltd. v. Stardock Entertainment, Inc., 107 U.S.P.Q.2d 2160 (E.D. Mich)
21
Id.
22
Id.
23
Id.
19
While Brown and E.S.S. Entertainment could lead
one to conclude that videogames enjoy a generous privilege
with respect to trademark infringement, First Amendment
protections should not be interpreted as permission to go
overboard in breaching trademark rights. The Northern
District of California provided some bounding guidance in
Electronic Arts, Inc v. Textron Inc., 103 U.S.P.Q.2d 1984
(2012). There, the court considered preliminary motions on
trademark use in EA’s Battlefield 3 video game. 24
The AH-1Z helicopter as it appears
in Battlefield 3. Electronic Arts v.
Battlefield 3 is a game portraying a simulation of modern
Textron, Inc., Case No. 12-CV-0118,
military combat, including among other things military
25
*9, (N.D. Cal, May 7, 2012)
hardware, uniforms, and vehicles. As a consequence of
these portrayals, EA sought a declaratory judgment against
Textron that the helicopters in their Battlefield game did not infringe Textron’s trademarks on
the AH-1Z and UH-1Y aircraft. 26 In response, Textron countersued for infringement, alleging
that helicopters featuring their marks feature prominently in the game and its marketing. 27 In
denying EA’s motion to dismiss the counterclaims, the court held that “Although consumers are
unlikely to think Textron has entered the video-game business, Textron has alleged sufficient
facts to support the inference that the game explicitly leads consumer to believe it is ‘somehow
behind’ or ‘sponsors’ Battlefield 3.” 28
While the Entertainment Arts holding was only in
response to a preliminary motion, the holding should give pause
to those looking to take advantage of the apparent freedom
granted by E.S.S. Entertainment. However, given that EA and
Textron settled the case prior to a final judgment, the final word
on where the line is between the First Amendment right to artistic
speech and trademark protections has yet to be written.
Textron’s AH-1Z helicopter.
Electronic Arts v. Textron,
Inc., Case No. 12-CV-0118,
*9, (N.D. Cal, May 7, 2012)
The Fair Use Defense
The alternative approach video game publishers may rely
on to defend trademark claims against their products is the claim
of fair use. A fair use defense to trademark claims comes in two
flavors. First, descriptive fair use refers to the use of a term only “to describe the goods or
services of [a] party, or their geographic origin.” 29 This class of uses encompasses using English
language terms for their literal meaning, even where such terms may also incidentally be
trademarked. This exception prevents one party in a market from appropriating descriptive terms
for their goods and thus denying their competitors the ability to adequately describe their
products. 30
24
Electronic Arts, Inc v. Textron Inc., 103 U.S.P.Q.2d 1984, 1988 (2012).
Id.
26
Id.
27
Id.
28
Id.
29
15 U.S.C. §1115(b)(4).
30
See Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1185 (5th Cir. 1980).
25
Second, nominative fair use exempts from liability those uses of a trademark which are
used solely due to the lack of a non-trademarked descriptive substitute. The Ninth Circuit
defined the boundaries of nominative fair use in New Kids on the Block v. News America
Publishing, Inc., 971 F.2d 302 (1992), where it stated
“But sometimes there is no descriptive substitute, and a problem
closely related to genericity and descriptiveness is presented when
many goods and services are effectively identifiable only by their
trademarks. For example, one might refer to the “two time world
champions” or “the professional basketball team from Chicago,”
but it’s far simpler (and more likely to be understood) to refer to the
Chicago Bulls. In such cases, use of the trademark does not imply
sponsorship or endorsement of the product because the mark is used
only to describe the thing, rather than to identify the source.” 31
Crucially, both of these defenses rely on the linguistic utility of trademarks in
communicating ideas. Consequently, their application to art assets in video games may be
limited. Nevertheless, Rockstar raised a nominative fair use defense in E.S.S. Entertainment in
addition to their First Amendment defense, though they were ultimately unsuccessful in that
argument since the “Pig Pen” as it appeared in their game was not literally the trademarked term
“Play Pen”. 32
Activision employed this defense to somewhat more success, in Romantics v. Activision
Publishing, 532 F. Supp. 2d 884 (E.D. Mich. 2008). In that case, the rock band The Romantics
raised a number of intellectual property claims in seeking to enjoin Activision’s inclusion of their
song “What I Like About You” from use in Activision’s Rock Band video game. 33 In denying
the preliminary injunction, the court found that the Romantics had no likelihood of success based
in part on Activision’s assertion of a nominative fair use defense. 34 While the name “The
Romantics” did appear in the video game, it did so in the phrase “as made famous by The
Romantics” to describe the song in the game. 35 As a consequence, the court held that this was
“not an infringing use of ‘The Romantics,’ and even if that were not so, an accurate reference to
the name of the group in this context would be permissible and immune from liability under the
‘nominative use’ doctrine.” 36
Publicity Rights
The other major category of rights that video game publishers need to be aware of are
publicity rights. Unlike the trademark discussed above, publicity rights concern the right of
individual people to control and profit from the commercial value of their personal identity.
These rights don’t derive from federal law in the way that trademark rights derive from the
31
New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (1992).
E.S.S. Entertainment, 547 F.3d at 1098-99.
33
Romantics v. Activision Publishing, 532 F. Supp. 2d 884, 890 (E.D. Mich. 2008)
34
Id.
35
Id.
36
Id. citing New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).
32
Lanham Act, but rather are primarily codified in state laws. This means that the specific
contours of an individual’s publicity rights may vary based on where suit is filed. Nevertheless,
an examination of how courts have enforced publicity rights can be instructive in understanding
the basic nature of this right and how it interacts with video game publishers.
The basic scope of the individual’s publicity right was defined in Haelan Laboratories,
Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953). In that case, the court considered
a number of questions relating to the rights to include baseball players’ likenesses on playing
cards. 37 The court there concluded that beyond an individual’s right to privacy, “a man has a
right in the publicity value of his photograph, i.e. the right to grant the exclusive privilege of
publishing his picture”. 38 Further, much like trademark rights, the individual’s right of publicity
must be balanced against the publisher’s first amendment right to speech. 39
The publicity right in video games may arise in much the same context as it did in Haelan
Laboratories. Just like trading cards, modern sports video games often feature as a selling point
that they will include the statistics and likenesses of a consumer’s favorite athletes. Thus, given
the strong financial incentive for video game publishers to include actual likenesses, it is
important to ascertain the precise boundaries of the individual’s publicity right.
The third circuit provided a framework for this analysis in
their decision in Hart v. Electronic Arts, 717 F.3d 141 (3d Cir.
2013). The Hart case concerned EA’s NCAA Football video game,
which featured the ability for players to take the reins of their
favorite college football programs and guide them to gridiron
victory. 40 In a bid for verisimilitude, the NCAA Football series of
games featured real college teams, and mimics the statistics of the
Ryan Hart, as he appeared in game
players on those teams. 41 For example, the game featured a
and in real life.
Rutgers quarterback, player number 13, who is 6’2” tall and
weighs 197 pounds. 42 In 2009, Rutgers’ real life quarterback,
Ryan Hart (player number 13, 6’2” tall, and weight 197 pounds), filed suit against EA for
appropriating his likeness in their video game. 43
In assessing whether EA had breached Hart’s publicity rights, the court identified the
three balancing tests which should be used to determine whether a likeness was improperly
appropriated: the predominant use test, the transformative use test, and once again the Rogers
test. We will address each of these tests in turn, and by so doing, discover the contours Hart has
lain out.
Predominant Use Test
37
Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953).
Id. at 868 citing Wood v. Lucy, Lady Duff Gordon, 222 N.Y. 88 (1917).
39
See Zacchini v. Scripps-Howards Broadcasting Co., 433 U.S. 562 (1977).
40
Hart v. Electronic Arts, 717 F.3d 141 (3d Cir. 2013)
41
Id.
42
Id.
43
Id.
38
The predominant use test originated in the case of Doe v. TCI Cablevision, 110 S.W. 3d
363 (Mo. 2003). In that case, NHL player Anthony “Tony” Twist brought suit against TCI
Cablevision based on the appearance of a fictional mafia don in their
Spawn comic named “Anthony ‘Tony Twist’ Twistelli. 44 TCI found
their defense to the prima facie case somewhat difficult to make in
light of a prior statement by Todd McFarlane, author of Spawn,
admitting that he took inspiration from real life figures in creating his
characters generally, and specifically had been
inspired by Twist in creating his mafia don. 45 The
court therefore focused on whether TCI’s
appropriation of Twist’s likeness fell within one of
the safe harbors created by the first
Anthony “Tony Twist” Twistelli,
amendment. 46 In this analysis, while the court
Image Comics
considered other approaches as well, it focused
on what it seemed to consider a fairer balancing
test, the predominant use test. 47 In this test, the key equity is one where “if a
product is being sold that predominantly exploits the commercial value of an
Anthony Twist,
NHL
individual’s identity, that product should be held to violate the right of
publicity and not be protected by the First Amendment, even if there is some
‘expressive’ content in it that might qualify as ‘speech’ in other circumstances.” 48 Applying this
test, the court held that TCI’s reference to Twist had “very little literary value compared to its
commercial value” and therefore found in his favor. 49
Unlike the other tests for permissive use of a protected mark, the predominant use test
does not create a bright line that, once crossed, indemnifies the publisher from their
appropriation. Instead, this test aims to ask whether the publisher of the accused work is
predominantly exploiting the individual’s publicity for their own gain, or whether they are
predominantly making an expressive statement that is owed protection. While the Missouri court
found the predominant use test to be the most fair, however, other courts have thus far declined
to follow their lead in applying this test to the realm of video games. 50 As such, while the
predominant use test should not be wholly ignored, it should be given less weight than the
remaining tests.
Transformative Use
The second major test for the use of publicity rights is the “transformative use” test. The
transformative use test derives from the world of copyright law, but was applied to the publicity
context in Comedy III Prods., Inc. v. Gary Sanderup, Inc., 25 Cal. 4th 387 (Cal. 2001). Comedy
III Prods. Concerned the publicity rights to The Three Stooges, owned by Comedy III.
44
Doe v. TCI Cablevision, 110 S.W. 3d 363 (Mo. 2003)
Id.
46
Id.
47
Id.
48
Doe v. TCI Cablevision, 110 S.W. 3d 363, 374 (Mo. 2003) citing Mark S. Lee, Agents of Chaos: Judicial
Confusion in Defining the Right of Publicity-Free Speech Interface, 23 Loy. L.A. Ent. L. Rev. 471, 500 (2003)
49
Id.
50
See Hart, 717 F.3d at 154; Kirby v. Sega of America, Inc., 144 Cal. App. 4th 47, 61-62 (2d Dist. Ct. App. 2006).
45
Sanderup, a charcoal artist, drew a picture of the Three Stooges and then used that image to
produce silkscreened and lithographic reproductions which he made available for sale. 51 After
finding that Sanderup’s use of the Stooges’ likeness fell within the ambit of California’s
publicity rights statute, the court turned to considering his First Amendment defense. 52
Within the scope of fair use, the court defined a transformative work as one where the
new work supersedes the objects’ of the original creation, or adds something new, with a further
purpose or different character, altering the first with new expression meaning or message. 53 The
court found that “This inquiry into whether a work is “transformative” appears to us to be
necessarily at the heart of any judicial attempt to square the right of publicity with the First
Amendment.” 54 In applying this copyright principle to the realm of publicity rights, the court
reasoned that “when a work contains significant transformative elements, it is not only especially
worthy of First Amendment protection, but it is also less likely to interfere with the economic
interest protected by the right of publicity.” 55 Applying this reasoning to the facts at hand, the
court concluded that Saderup’s portrait images did not have significant creative contribution
sufficient to transform the image of the Three Stooges to a new creative enterprise. 56
Within the realm of video games, California applied the transformative use test in the
case of No Doubt v. Activision Publishing, Inc., 192 Cal. App. 4th 1018 (2d Dist. Ct. App. 2011).
In that case, Activision found themselves once again under the gun for depictions of a band, this
time in their Band Hero video game. 57 The band No Doubt objected in this case to computer
generated images of the band’s members. 58 Activision moved to strike No Doubt’s claims, and
the court considered their contentions. 59 Citing Comedy III, Activision alleged that their
depiction of No Doubt transformed the band members through their 3D computer modeling,
unique creative surroundings, and having the band perform songs that they would never perform
in reality. 60 Activision contended that this was a transformation akin to Warhol’s silk screens of
Marilyn Monroe, and entitled to a similar degree of protection. 61
The court, though, disagreed. 62 In finding for No Doubt, the court found that the game
depicted the band playing rock music, the same activity by which the band rose to fame. 63
Further, the court found that Activision was motivated by using the band’s fame as a marketing
tool. 64 Consequently, the court declined to strike No Doubt’s publicity rights claim. 65
51
Comedy III Prods., Inc. v. Gary Sanderup, Inc., 25 Cal. 4th 387 (Cal. 2001).
Id.
53
Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797, 808 (Cal. 2001) citing Campbell v. Acuss-Rose
Music, Inc., 510 U.S. 569, 579 (1994).
54
Id. at 808.
55
Id.
56
Id.
57
No Doubt v. Activision Publishing, Inc., 192 Cal. App. 4th 1018 (2d Dist. Ct. App. 2011)
58
Id.
59
Id.
60
Id.
61
Id.
62
Id.
63
Id.
64
Id.
65
Id.
52
As alluded to prior, roughly the same analysis motivated the 9th Circuit in Keller v. Elec.
Arts, Inc., 724 F.3d 1268 (2013). Keller concerned a putative class action brought by Samuel
Keller, a college football quarterback for Arizona State University as well as the University of
Nebraska. 66 Keller alleged that EA’s NCAA Football series improperly appropriated his
likeness, to which EA raised a transformative use defense in a motion to strike. 67 In denying
EA’s motion, the court found the case to be similar to the facts of No Doubt. 68 While EA
contended that the court need look at the game as a whole, of which Keller’s likeness was only a
small portion, the court relied on No Doubt and Hart to hold that EA’s implementation of
Keller’s likeness was not entitled to first amendment protection because it was not sufficiently
transformative. 69
Despite these cases, there is a glimmer of light for game publishers in Judge Ambro’s
dissent in Hart. 70 Judge Ambro disagreed with his colleagues and found that the majority
inappropriately ignored the full scope of the game and focused only on those aspects which
reflected Hart’s identity. 71 As described by Judge Ambro:
“NCAA Football involves myriad original graphics, videos, sound
effects, and game scenarios. These artistic aspects permit a user to direct
the play of a college football team whose players may be based on a
current roster, a past roster, or an entirely imaginary roster comprised of
made up players. Users are not reenacting real games, but rather are
directing the avatars in invented games and seasons. Further the “Campus
Legend” and “Dynasty Mode” features permit users to control virtual
players and teams for multiple seasons, creating the means by which they
can generate their own narratives. Such modes of itneractive play are, I
submit, imaginative transformations of the games played by real
players.” 72
Consequently, Judge Ambro merely found Hart’s likeness to be akin to a raw component from
which EA crafted their video game, and therefore found the game entitled to First Amendment
protection from Hart’s publicity claim. 73
The Rogers test (redux)
The final approach courts have considered for resolving the question of publicity rights
has been to apply the Rogers test discussed previously for its role in trademark law. Indeed, the
case from which the test originates concerned the appropriation of the privacy rights of famed
66
Keller v. Elec. Arts, Inc., 724 F.3d 1268 (2013)
Id.
68
Id.
69
Id.
70
Hart, 717 F.3d at 171 (J. Ambro, dissenting).
71
Hart, 717 F.3d at 171 (J. Ambro, dissenting).
72
Id. at 175.
73
Id.
67
actress Ginger Rogers. 74 As discussed above, the Rogers test asks first whether the use has
artistic relevance to the underlying work.
Application of the test to the publicity context can be seen in Dillinger, LLC v. Electronic
Arts, Inc., 795 F. Supp. 2d 829 (S.D. Ind. 2011). In that case, Dillinger LLC asserted the
publicity rights of notorious gangster John Dillinger against EA, for their portrayals in The
Godfather video game series. 75 In the games, players can play the role of mob bosses in period
Chicago, utilizing among other instruments, a gun labeled the “Dillinger Level Three Tommy
Gun.” 76 The court there found, as in Brown, that video games were a type of art entitled to
statutory protections for literary and otherwise creative works. 77 In effect, the court interpreted
video games to fall within a statutory carve-out which closely mirrors the Rogers test. 78 In so
doing, the court identified video games as having sufficient artistic merit independent of the label
of a gun, and little enough risk of confusion. 79
The court in Hart, however, found the Rogers test inapposite. 80 EA attempted to argue
that the use of the likenesses of college football players is not unrelated to the underlying work
of a football video game. 81 In response, the court held that this interpretation of the Rogers test
“threatens to turn the right of publicity on its head.” 82 In effect, allowing appropriation of an
individual’s publicity right in contexts closely related to the source of their fame would exempt
from liability those parties with the most to gain by this appropriation. 83 The court then stated
that the publicity right encompasses a greater bundle of rights than trademarks, and therefore the
Rogers test was inappropriately limiting.
Nevertheless, while the transformative use test is likely to predominate discussions of the
publicity right in the context of video games, it will continue to be important to consider all three
of the tests outlined by courts when evaluating the legal risk of development decisions.
Other IP Rights at Issue
Finally, we must look at some of the less common, but no less interesting, issues that may
arise in the area of third party IP in video games. While many of these issues are still evolving,
the key through line for all of them is that developers and publishers must be wary of the full
spectrum of intellectual properties that might arise from implementing assets that mimic reality
or common cultural touchstones.
Copyright
74
Rogers, 875 F.2d at 994
Dillinger, LLC v. Electronic Arts, Inc., 795 F. Supp. 2d 829 (S.D. Ind. 2011)
76
Id.
77
Id.
78
Id.
79
Id.
80
Heart, 717 F.3d at141
81
Id.
82
Id. at 157.
83
Id.
75
While most video game publishers are not so brazen as to include copywritten work in
their games without a license, some claims can arise from unexpected places. In 2016, Solid
Oak Sketches filed a copyright infringement complaint against Take-Two Interactive not for a
piece of text or music in their games, but based on tattoos. 84 Solid Oak is a licensor of tattoos on
NBA players like LeBron James, Eric Bledsoe, and Kenyon Martin. Take-Two created video
game models of these players in their game NBA 2k16, including the tattoos on the players that
are visible when they are in uniform. Solid Oak will face their own hurdle, in that the courts
have not yet conclusively determined whether tattoos are eligible for copyright protection. If
they can successfully demonstrate that tattoos are in a sufficiently fixed medium, Solid Oak may
open yet another avenue through which video game developers will have to be wary when
including real world assets in their games.
User-generated content
Another area in which the law is still developing concerns the liability of game publishers
for the infringing actions of their users. The interactive nature of video games has led to the
creation of a plethora of games that include character creators and level designers baked right
into the fabric of the game. These creative tools allow users to craft their experience in
innumerable ways, but also allow for the possibility that users will recreate protected marks or
images. In 2004, Marvel sued NCSoft, makers of the massively multiplayer online game City of
Heroes over their character creator. 85 The City of Heroes game permits players to craft their own
superhero, choosing from various costume elements and superpowers to make their own villainstomping avatar. Marvel, however, alleged that the game had infringed trademarks over their
comic book heroes such as The Incredible Hulk, Wolverine, and Storm, by permitting players to
create identical copies of these heroes, with the same appearance and powers, and then play as
those characters in NCSoft’s game. While Marvel and NCSoft settled their dispute before the
case could be fully argued, the suit represents a potential area of concern as game editors
increasingly shift from the realm of developer tools and become a part of the final consumer
facing product.
Conclusion
As should by now be clear, there is plenty of room for speculation and revision as the
field of third party IP in video games moves forward. As major development studios stake out
their position, we will likely see as many of these battles taking place in the press and the
boardroom as in the courtroom. For example, Electronic Arts, who have featured heavily in the
caselaw that already exists on this topic, announced in 2013 that they would be severing all
licensing ties to gun manufacturers. 86 In the same breath, they also asserted that branded
firearms would continue to appear in their games, based on their belief that they had a right to do
so. 87 On the other hand, Sony has carried a licensing agreement with the MLB Player’s
84
Yolanda M. King, Tattoo Copyrights May Finally Get Their Day in Court, Law360, New York (April 28, 2016),
available at https://www.law360.com/articles/788694/tattoo-copyrights-may-finally-get-their-day-in-court
85
Marvel Enterprises, Inc. v. NCSoft Corporation, Case. No. 04CV9253 RGK (C.D. Cal. November 10, 2004)
(Complaint).
86
Video Game Maker Drops Gun Makers, Not Their Guns, Reuters, May 7, 2013, available at
http://www.reuters.com/article/us-videogames-guns-idUSBRE9460U720130507
87
Id.
association for their MLB The Show game series, demonstrating a recognition that in at least
some contexts, video game developers may be well served to negotiate deals with third parties
rather than wait for a lawsuit to develop. 88
In the end, the question of how to handle third party intellectual property that could arise
in video games will largely be a case by case consideration of how similar the assets are to their
third party analogs, how important those assets are to the work, and whether those assets have
been sufficiently transformed by the video game they have been added into.
88
See MLBPlayers.com, Licensing Programs. Available at
http://www.mlbplayers.com/ViewArticle.dbml?DB_OEM_ID=34000&ATCLID=211159413, accessed on 3/17/17.