Recently, the United States District Court of the Southern District of New York issued rulings regarding the depiction of "real world" content in digital environments. In both instances the cases were decided in favor of the game publisher, and the rulings provide guidance on how game developers and publishers should consider these issues.
On March 26, 2020, the United States District Court of the Southern District of New York ruled that depicting players in a basketball simulation video game with their actual tattoos did not constitute copyright infringement, rejecting a lawsuit brought by Solid Oak Sketches LLC (Solid Oaks), the company that held exclusive licenses to the tattoos.1
Solid Oaks sued Take-Two Interactive Software, Inc. (Take-Two), the maker of the basketball game franchise NBA 2K2, for public display of five tattoos on NBA players Lebron James, Eric Bledsoe, and Kenyon Martin. The court rejected the claim on several grounds, finding the use of the tattoos was de minimus, shielded by the doctrine of fair use and that the tattoo artists who had originally inked the tattoos had granted the players nonexclusive licenses to use the tattoos as part of their likenesses.3
Just five days later on March 31, 2020, that same court ruled that depicting a Humvee in Call of Duty, a video game that centers on modern warfare, did not constitute trademark or trade dress infringement under federal or New York state law4, rejecting a lawsuit brought by AM General LLC (AMG), the maker of Humvees and registered owner of the Humvee trademark.
AMG sued Activision Blizzard and Activision Publishing, Inc. (collectively, Activision) and Major League Gaming Corp. for depicting Humvees in nine different versions of Call of Duty. The court rejected the trademark claims on several grounds, finding that Activision's depiction of Humvees had artistic relevance to the game because it provided players a sense of realism and presented an extremely low likelihood of consumer confusion regarding the Humvee trademark. The court rejected the trade dress claims because it found the depiction of Humvee's trade dress in Call of Duty was non-functional, and there was an "improbability of confusion between a vehicle and a video game."5
Contextual Use—Genuine Relevance to a Video Game's Story
These two rulings illustrate that courts will consider context when determining whether a real-life product or work in a video game infringes intellectual property rights. When the use of product is artistic or expressive, courts will look to avoid suppressing protected speech under the First Amendment.6 Use of a real-life product needs to have artistic relevance to the underlying work (meaning it must be genuinely relevant to a video game's story) and not mislead as to the source or the content of the work.7 When a work is included to depict a likeness (like tattoos), copying from real life should be used for the transformative purpose of creating a realistic game experience and not to serve as substitute for the original work or for expressive value alone.8 Therefore, real life works or products should be included in a video game with an artistic goal of enhancing the player experience by attempting in good faith to realistically recreate real-life scenarios.
Amount of Use
The manner in which a work is featured in a game matters. Courts will consider whether the copying of a work is de minimis, or so trivial that it falls below a threshold of substantial similarity to protected material in an original work,9 and will look at such factors as the amount of a work that is copied, how frequently a work appears during gameplay and the size and distinctness of the depiction of the work. Further, a product or feature should be merely incidental to the success of a game and not highlighted in marketing materials so that a user can discern that the mere presence of a brand or item in a game, when intermittently shown, does not indicate the brand that sponsored the game.10
Public Awareness
Courts will also consider the public's awareness of a product or work, considering how likely it is that that product or work appears in public, on television, in commercials, or in other forms of media. In some instances, an implied license to a work may even arise when the third party is well-known and intends to publicly display the work, such as tattoos on basketball players.
The above are just a few considerations when featuring a product or work in a video game to produce realistic gameplay experience.
1 See Solid Oaks Sketches LLC v. 2K Games, Inc. and Take-Two Interactive Software, Inc., No. 16-CV-724-LTS-SDA, 2020 U.S. Dist. LEXIS 53287 (S.D.N.Y. Mar. 26, 2020).
2 The tattoos are depicted in in versions 2K14, 2K15, and 2K16 (released in 2013, 2014, and 2015, respectively). Id. at *4.
3 Id. at *22.
4 See AM General LLC v. Activision Blizzard, Inc., 1:17-cv-08644-GBD-JLC, 2020 U.S. Dist. LEXIS 57121 (S.D.N.Y. Mar. 31, 2020). The plaintiff also brought claims of unfair competition, false designation of origin, false advertising and dilution under both New York state law and the Lanham Act, the federal statute that governs trademarks, service marks and unfair competition.
5 AM General, at *31.
6 See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (explaining the Lanham Act).
7 AM General, at *10-11.
8 Solid Oaks, at *26.
9 Id. at *15-16.
10 See Louis Vuitton Mallatier S.A. v. Warner Bros. Entm't Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012).
