Video game law update: cases involving NBA 2K, Call of Duty and Fortnite

The past few days have been incredibly packed in terms of developments relating to video game law in the United States. In just a matter of days, we had a decision relating to the rendering of specific tattoos which appear on real professional basketball players in the "NBA 2K" games, we had a decision on the use of certain vehicles in the "Call of Duty" games and another decision on the depiction of "signature moves" in "Fortnite". Let's take a look at each of these cases to better understand what game developers can or cannot do.

1. Depiction of tattoos on persons in the “NBA 2K” games

On March 26, 2020, a federal judge ruled that 2K Games and Take-Two Interactive Software did not infringe copyright when the popular game series “NBA 2K” replicated in-game tattoo designs of basketball players such as LeBron James. The company Solid Oak Sketches sued 2K Games and Take-Two Interactive, alleging it owns the copyrights for tattoos that are depicted on several prominent professional basketball players featured in the games. It argued that while players may grant the NBA the right to license their likeness to third parties, such right does not include the copyright to the artwork used as tattoos on the basketball players.

Judge Laura Taylor Swain first found that the use of the tattoos in the games was de minimis: the tattoos comprise only a minuscule proportion of the game data and the tattoos did not play any significant role in the marketing of the NBA 2K games. In addition, Judge Swain found that the tattoos are depicted at only 4.4% to 10.96% of their actual size and, when visible, they are generally distorted due to movement of the respective players or the tattoos being out of focus. Secondly, Judge Swain found that when players granted the right to include their likenesses in games, this tight necessarily included the right to depict the players with their tattoos since the tattoos are elements of their likeness. Finally, Judge Swain found that the use of tattoos in the game is protected by fair use since the tattoos were used in the games only in order to accurately depict the physical likenesses of real-world basketball players.

2. Use of vehicles in "Call of Duty" games

On April 1, 2020, another federal judge ruled that the 'Call of Duty' games may use Humvee vehicles as a mode of transportation since the depiction of the vehicles in the games helps increasing realism in a game simulating modern warfare. In its lawsuit filed in 2017, vehicle manufacturer AM General sued Activision Blizzard and Activision Publishing, alleging that Call of Duty players were being “deceived into believing that AM General licenses the games or is somehow connected with or involved in the creation of the games” due to the use of Humvee vehicles in 'Call of Duty' games.

In the decision, Judge George Daniels held that if "realism is an artistic goal, then the presence in modern warfare games of vehicles employed by actual militaries undoubtedly furthers that goal". Judge Daniels further found that the likelihood of consumer confusion was low, on the basis that there is no risk that someone would mistakenly buy a 'Call of Duty' game instead of a Humvee vehicle (and vice versa) out of sheer confusion about who built or distributed the product. Ultimately, Judge Daniels ruled that the vehicle manufacturer AM General did not demonstrate any harm to its trademarks arising from the presence of Humvee vehicles in the 'Call of Duty' games. Accordingly, the suit was summarily dismissed.

An interesting element of the case is that AM General claimed that it had previously complained to Activision about the use of its vehicles back in 1998 in relation to another game, 'SiN'. At the time, Activision had agreed to remove Humvee vehicles from the game 'SiN'. However, Judge Daniels ruled that that the 20-year old correspondence between AM General and Activision could not be used in the current case and that the use of Humvees in 'Call of Duty' does "not demonstrate a desire to "sow confusion between the two companies’ products.”

3. Use of in-game emote in Fortnite

On March 31, 2020, a federal judge ruled that the developer of the game 'Fortnite', Epic Games, could replicate a musician’s “signature move” in the game. The game 'Fortnite' generates revenue by selling virtual content that players can use while playing. (Id.) Virtual content which may be purchased includes customizations for the game characters such as ‘emotes’ that enable the game characters to perform dances or movements which are often based on popular videos, movies and television shows. Leo Pellegrino, a professional baritone saxophone player, sued Epic Games for allegedly reproducing his dance moves in 'Fortnite'. Gamers may execute these dance moves by purchasing the "Phone It In" emote for about $8.

In the decision, Judge John Padova found that Epic’s use of Pellegrino’s likeness in the game is sufficiently transformative since the game characters do not share Pellegrino’s identity or appearance, nor do what  Pellegrino does in real life. Game characters in 'Fortnite' fight in a battle royale and can execute emotes like "Phone It In" while in the Fortnite universe, whereas Pellegrino is a musical performer who executes his "signature moves" at musical performances. Judge Padova further dismissed the other claims made by Pellegrino, such as unjust enrichment, unfair competition or false designation of origin. However, Judge Padova ruled that the false endorsement claim may continue.

4. So what does this mean in practice?

What is interesting here is that although the above-mentioned games are very different in nature, the decisions all pertain to the use or depiction of real life elements in video games, and the thorny issue of IP law and licensing before any real life element may be used in a game. The decisions appear as victories for the video game industry.

Some commentators have gone as far as calling some of these decisions “landmark" rulings because they directly address the issue of ownership and copyright in games. Nevertheless, we recommend exercising caution before reaching any conclusion, since each decision was very dependent on the facts in issue, and more importantly, each of the above three decisions were delivered by a district court. Accordingly, some degree of uncertainty will remain as to the impact of these cases on the game industry until the issue is brought before a court of appeals.