Many video games are marketed on the photorealism of their imagery and graphics. However, depending on the depiction, developers and publishers may need to worry about the underlying intellectual property rights in that depiction. Recent court decisions addressing tattoos and tractors in video games show growing intellectual property litigation around real-world designs appearing, even incidentally, in the digital world.
Tattoos
In several cases, tattoo artists have asserted ownership over the copyright rights in the tattoos they create for clients who have appeared in video games. First, in Solid Oak Sketches, LLC v. 2K Games, Inc., Solid Oak, a tattoo licensing company, sued 2K Games for copyright infringement, alleging that Solid Oak held the exclusive copyright license to five tattoos depicted on three players in the NBA 2K basketball game franchise.1 The court rejected the infringement claims on the basis of three independent copyright defenses: de minimis use, implied license, and fair use.2 For a more detailed discussion, see the prior Wilson Sonsini alert available here.
Fast forward two years to Alexander v. Take-Two Interactive Software, Inc. A tattoo artist prevailed in a copyright infringement suit against Take-Two Interactive Software, Inc.3 Take-Two's WWE 2K game series featured a realistic depiction of professional wrestler, Randy Orton, a client of tattoo artist Catherine Alexander.4 An Illinois jury rejected Take-Two's fair use defense, awarding Alexander money damages for actual losses from Take-Two's infringement of her copyright in the tattoos, and the court, in partial summary judgment, rejected the de minimis use and implied license defenses that were successful in Solid Oak Sketches.5
In light of Alexander, gaming companies may need to exercise more caution when depicting copyrighted tattoos and other incidental designs without permission, even when capturing a person's likeness or appearance.6 The litigation in this space is ongoing. In Hayden v. 2K Games, Inc., tattoo artist James Hayden sued over the use of tattoos on basketball players depicted in the NBA 2K series.7 The parties are awaiting a trial date.
Tractors
Depictions of vehicle designs can also raise intellectual property concerns, as demonstrated in Saber Interactive Inc. v. Oovee, Ltd., a case heard by a Washington district court.8 Saber had entered into a license agreement with Peterburgsky Traktorny Zavod JSC (PTZ), giving Saber exclusive intellectual property rights to display the K-700 in Saber's games.9 Oovee subsequently released a game featuring a vehicle that was promoted as using "articulating steering like the K-700," along with a disclaimer that any similarities to real-world vehicles are merely coincidental and vehicles in the game are fictitious "except where licensed."10
Saber sued Oovee for unfair competition under Section 43(a) of the Lanham Act, unfair competition under Washington's Consumer Protection Act, and unjust enrichment.11 Saber claimed that Oovee's use of the K-700's design misled consumers to believe that Oovee had Saber's endorsement, but the court rejected this argument.12 The court agreed with Oovee that a video game is an expressive work, affording it First Amendment protections.13 This finding meant that Saber's unfair competition claims had to pass the Rogers test, established to balance First Amendment protections in artistic expressions against trademark rights under the Lanham Act in a 1989 Second Circuit decision.14 The Rogers test required Saber to show that Oovee's use of the K-700 1) had no artistic relevance to Oovee's game, or 2) explicitly misled consumers regarding the source of the work.15
The court found that Saber had failed to plausibly allege that Oovee's use of the K-700 mark or trade dress was explicitly misleading.16 This finding led the court to dismiss Saber's unfair competition claims under the Lanham Act and Washington law.17 The court held that Oovee had not expressly misled its consumers about its rights to use real-world vehicle designs or its relationship with Saber.18 Moreover, Saber's allegations regarding a "likelihood of confusion" did not meet the Rogers test's high bar of "explicitly misleading."19 Oovee's use of the K-700 name also failed to meet this prong of the Rogers test since the "use of a mark alone" is not enough to satisfy it.20 The legal battle between Saber and Oovee appears far from over. The court granted Saber permission to file an amended complaint, granting it permission to add new defamation and tortious business interference claims regarding a recent press release from Oovee.
The Saber ruling is consistent with a 2020 ruling by a New York district court concerning Humvee depictions in Call of Duty, a video game that centers on modern warfare.21 The court there also applied the Rogers test and dismissed trademark infringement claims under the Lanham Act and New York state law.22 For a more detailed discussion, see the prior Wilson Sonsini alert available here.
The above are just a few considerations when featuring a product or work in a video game to produce realistic gameplay experience. For more information, please contact Chris Paniewski, Aaron Hendelman, or another member of the firm's electronic gaming, technology transactions, or trademark and advertising practices.
[1] Solid Oak Sketches, LLC. v. 2K Games, Inc., 449 F. Supp. 3d 333 (S.D.N.Y. 2020); Christopher A. Paniewski et al., N.Y. District Court Rules on Depictions of Products and Works in Video Games, Wilson Sonsini Client Alert, https://www.wsgr.com/en/insights/ny-district-court-rules-on-depictions-of-products-and-works-in-video-games.html (May 18, 2020).
[2] Solid Oak Sketches, LLC. v. 2K Games, Inc., 449 F. Supp. 3d 333 (S.D.N.Y. 2020).
[3] Alexander v. Take-Two Interactive Software, Inc., 489 F. Supp. 3d 812 (S.D. Ill. Sept. 26, 2020).
[4] Id.
[5] Verdict Form, Alexander v. Take-Two Interactive Software, Inc., Case No. 3-18-cv-00966-SMY (S.D. Ill Sept. 30, 2022), ECF No. 298, available at https://fingfx.thomsonreuters.com/gfx/legaldocs/lbvgnqbqopq/IP%20WWE%20COPYRIGHT%20verdict.pdf.
[7] Aaron Perzanowski & Eric Goldman, Jury Awards Damages to Tattoo Artist for Video-Game Depiction—Alexander v. WWE 2K (Guest Blog Post), Tech. & Mktg. Law Blog, https://blog.ericgoldman.org/archives/2022/10/jury-awards-damages-to-tattoo-artist-for-video-game-depiction-alexander-v-wwe-2k-guest-blog-post.htm (Oct. 6, 2022); Complaint, Hayden v. 2K Games, Inc., 1:17-cv-02635 (N.D. Ohio Dec. 18, 2017), ECF No. 1.
[8] Saber Interactive Inc. v. Oovee, Ltd., No. 2:21-cv-01201-JHC, 2022 U.S. Dist. LEXIS 183401 (W.D. Wash. Oct. 6, 2022).
[14] Rogers v. Grimaldi, 875 F.2d 994 (2d. Cir. 1989).
[15] Saber Interactive Inc., 2022 U.S. Dist. LEXIS 183401, at *13-14.
[21] AM Gen. LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467 (S.D.N.Y. 2020).
