Keepin' It Real: Courts Recognize the Legitimate Goal of Video Game Makers

In two recent cases, federal courts have ruled in favor of video game makers regarding their use of certain images in their games. In each instance, the court took note of the video game company’s purpose in using the copyrighted or trademarked image at issue:  to create video games with a high level of reality and authenticity.

In the first case, Solid Oak Sketches, LLC v. 2K Games, Inc. and Take-Two Interactive Software, Inc. (S.D.N.Y. March 26, 2020), Solid Oak Sketches, the owner of a series of copyrighted tattoos, brought a claim for copyright infringement against the video game maker, Take-Two Interactive. Solid Oak Sketches owns the copyright to tattoos appearing on NBA player LeBron James and others. In Take Two’s video game series “NBA 2K,” James and others are depicted realistically, including their tattoos. The NBA, which owns the rights to the NBA players’ likenesses, had granted licenses to Take-Two for use of the NBA players in “NBA 2K.”

The NBA might own the rights to the players’ likenesses, but Solid Oak Sketches argued that it alone owned the license for the tattoos on James and the other athletes. It is true that Solid Oak Sketches had purchased the copyrights from the tattooists after the tattoos had been placed on the athletes. But the story does not end there. The court found that when the tattoo artists inked the tattoos onto these athletes, the artists “necessarily granted the players nonexclusive licenses to use the tattoos as part of their likenesses.” The artists should have understood that these athletes would appear often in public—with many of their tattoos in plain sight. The court refused to countenance a reading of copyright law that would require the athletes to seek permission from the tattoo artists whenever they appeared in public, with their tattoos displayed.

In granting Take-Two’s motion for summary judgment, the court considered a host of arguments, finding for Take-Two across the board. Take-Two argued that in each instance of the tattoo being shown in the video games, it was merely for a fleeting amount of time and the image itself was quite small and indistinct. Given the tattoos’ lack of prominence during gameplay, the average person would not be able to identify their subject matter, let alone their style. The copying of these tattoos was de minimis; therefore, it was so trivial as to fall below the quantitative threshold of substantial similarity.

The court also agreed with Take-Two’s fair use counterclaim, finding that the tattoos’ use in the games was transformative. The court considered the factors such as market effect, amount or substantiality of use, nature of the work and the purpose and character of the use. There was no likelihood that consumers bought the “NBA 2K” video games for the tattoos. Take-Two’s purpose in including the tattoos was not to create customer confusion or to mislead. The tattoos were used for one purpose only: to portray the athletes as realistically as possible.

This purpose—achieving realism—was a transformative use. To understand why Take-Two’s use was transformative, consider the other components included in the game that increase authenticity: the sound of basketball shoes against the court’s surface, the crowd and the horns; the play-by-play announcers; the team jerseys and numbers; and the coaches, referees and cheerleaders. It is no wonder that the court agreed that Take-Two’s stated purpose in including the players’ tattoos was “in order to most accurately depict the players” and thus a permissible transformative use.

In another victory for realism in video games, a federal judge dismissed a lawsuit against a video game maker, based on the First Amendment, in AM General LLC v. Activision Blizzard, Inc. (S.D.N.Y. March 31, 2020). 

To add realism and authenticity to its popular “Call of Duty” series of military simulation games, Activision included Humvees, both in the background of the games and for gamers to drive. In the court’s words, “the Humvee has become an iconic and a ubiquitous symbol of the modern American military.” Over the years, the manufacturer, AM General, had granted licenses to a variety of companies to use the Humvee trademarks for products ranging from toys and other video games to depictions in movies such as “Jurassic Park.” Thus, it was no surprise that litigation resulted from Activision’s use of the Humvee in the “Call of Duty” series without first obtaining a license from AM General.

The question was straightforward: Did Activision’s desire for reality in “Call of Duty” constitute a valid artistic or expressive purpose, thus protecting it from liability under the Lanham Act? Reality won.

In rejecting AM General’s trademark infringement claims, the court applied the two-pronged Rogers test (Rogers v. Grimaldi, 875 F. 2d 994 (2d Cir. 1989)). The first prong, whether the Humvees used in “Call of Duty” have artistic relevance, brought the issue of realism in video games to the fore. In the court’s words, “[f]eaturing actual vehicles used by military operations around the world in video games about simulated modern warfare surely evokes a sense of realism and lifelikeness to the player.” This constituted artistic relevance.

As for the second prong, whether Activision’s use of the Humvees was explicitly misleading, the court utilized the “venerable Polaroid factors” to address risk of consumer confusion and whether the depiction of the Humvees was explicitly misleading (Polaroid Corp. v. Polarad Elecs. Corp.,287 F. 2d 492 (2d Cir. 1961)). While there was no dispute as to the strength of the Humvee mark, there was minimal likelihood of consumer confusion and no evidence that consumers were being misled. In the court’s words, “[p]ut simply, [AM General’s] purpose in using its mark is to sell vehicles to militaries, while [Activision’s] purpose is to create realistically simulating modern warfare video games for purchase by consumers.” All in all, the Polaroid factors weighed in Activision’s favor. The overarching point was that the use of the Humvees in the “Call of Duty” games was for one purpose: realism. Given this valid artistic goal, “the presence in modern warfare games of vehicles employed by actual militaries undoubtedly furthers that goal.” 

In each case, the video game company was simply trying to create games with as much authenticity as possible.

The takeaway from these two cases is unclear given that both were very fact specific.

Once a tattoo is placed on someone, are there any limits to the implied grant of license? 

In other games, video game companies have sought license rights to depict cars for racing games. But in light of the ruling that the use of the Humvees for the sake of reality is transformative, this may impact the degree to which such licensure is sought in the future. Perhaps there are factual distinctions that will limit the ruling in the Humvee case. In “Call of Duty,” the Humvee’s depiction is secondary to the main goal of simulating military warfare. But in racing video games, driving the vehicle is the purpose of the game itself, and the featured car is front and center in the game. Is this a relevant distinction for future cases? 

These are questions for another day. But for now, at least regarding these two video game series, the courts are “keepin’ it real” for gamers.

Hon. Nancy Holtz is a full time neutral at JAMS and available in person and via videoconference for mediations and arbitrations nationally.