NBA 2K Can Use Protected Tattoos and Fortnite The “Phone It In” Dance
Has The Law Eased Up On Third Party IP Use? Not exactly, but there has been a shift in how much of a celebrity’s likeness, e.g. a character that looks like a celebrity, can be used in a game without violating the law.
Two federal courts are now granting video game developers use of celebrity likenesses within their games without a license. That is indeed a victory for the video game industry, in particular regarding recent legal battles over misappropriation of celebrity likeness in video games, such as Hart v. Electronic Arts, Inc and No Doubt v. Activision Publishing, Inc. Keep in mind though, the law hasn’t “changed,” these decisions only provide valuable guidance to assess risk and clearance strategies when considering using a celebrity’s likeness in your game and will give perspective to the ongoing dispute between Take Two Interactive and WWE in Illinois over the use of the tattoo on a wrestler.
Here’s what happened
On March 26, 2020, a federal district court in New York held that NBA 2K did not infringe copyright by placing copyright protected tattoos on players’ avatars in NBA 2K. A few days later, a federal district court in Pennsylvania held that Fortnite Battle Royal had not misappropriated the likeness of a professional saxophonist by replicating his signature dance move (so he claims) as an emote. Although the decisions are very different, in two different jurisdictions, concerning two different games, the gist is the same: creative expression in video games is on par with such of other artistic mediums – meaning, they deserve the same First Amendment protection just like any other.
In Solid Oak Sketches, LLC v. 2K Games Inc., the court decided that this specific featuring of tattoo designs on various players without permission did not amount to copyright infringement for three separate reasons: The use was limited (so called de minimis use) because only three out of the 400 players in the game had the tattoo, which in addition, was too small, indistinct and obstructed by game elements to be identified by the users. The court backed this up with a very rare move, the use was too limited because the tattoos comprised only 0.000286% to 0.000431% of the total game data for NBA2K. Fair use was held “because there was no market for licensing of tattoos for use in video games, nor was one likely to develop.” While de minimis and fair use rest on the game’s particular use of the images, the court also gave way to the argument, that the players, though not the rights holders, could grant Take Two Interactive an implied license for use.
In Pellegrino v. Epic Games, the court decided that allowing the game’s avatars to perform the dance transformed the protected dance to such an extent that the author’s likeness was not affected anymore – hence no infringement. In simple, the avatars didn’t look like Pellegrino and performed different functions (warrior vs. musician) so there “can’t be any likeness” of Pellegrino.
What does that mean and what’s so great about this?
For the past two decades, we’ve seen a series of cases denying First Amendment protection (which was essentially the defendants argument) to developers of video games who use avatars of real athletes and celebrities, while granting it to movies, television, and other forms of expression. This turn is remarkable as it is another step to acknowledging the importance of video games.
These decisions, however, were heavily based on these two specific fact scenarios and how the games depicted the tattoo’s and the saxophonist in particular. They aren’t saying: use tattoos, that’s fine, or take a popular move from a celebrity, that’s also fine. What these decisions do say, however, is that video games can and should be afforded the same constitutional protections as visual art, film, music and other forms of expression. Nevertheless, the analyses, in particular of the amount used of the protected content, will be an interesting double-edged sword for such disputes, and will give guidance when considering using and how to use such protected content.
Author: Jennifer Kleinman and Daniel Koburger
First Publication: 4/17/2022