I always look forward to reading a video game case that starts with “Plaintiff Philip Ahn is a fourth degree black belt in Tae Kwon Do and has practiced martial arts for approximately twenty years. Plaintiff Elizabeth Malecki holds a degree in ballet and modern dance and is a professional dancer, actress, and aerobics instructor. Plaintiff Katalin Zamiar is a first degree black belt in Karate and has twelve years of experience.” (emphasis added) This is also an interesting case in that it is one of the few that deals with preemption of state law by the federal Copyright Act of 1976 (here, state law rights of publicity get preempted).

The games at issue are Mortal Kombat (MK) and Mortal Kombat II (MKII), and the defendants are Midway (copyright owner in MK and MKII), Williams Electronics (makes the coin-operated versions of MK and MKII), Acclaim Entertainment (developed version of MK and MKII for Nintendo and Sega game consoles), Nintendo of America (game console mfr and game publisher), and Sega of America (then a game console mfr and game publisher), each of which is well known in the industry.

Mortal Kombat:


Each plaintiff alleges that, on separate occasions between 1992 and 1993, they were approached by Midway's agents about the possibility of using their images, names and performances for various characters in the coin-operated arcade format of MK and MKII. Plaintiff Malecki modeled the character Sonja Blade for MK (see above screenshot). Plaintiff Ahn modeled the character Shang Tsung in the coin-operated version of MKII, while plaintiff Zamiar modeled for three characters, Kitana, Mileena, and Jade, all of whom appeared in MKII. Midway videotaped each plaintiff’s movements, digitized the images, and incorporated the digitization into the coin-operated arcade games. The games were successful, and Sega and Nintendo soon released game console versions of MK and MKII.

Mortal Kombat (Elizabeth Malecki as Sonya Blade):


Mortal Kombat II (Katalin Zamiar as Kitana):


As is generally the case, each plaintiff signed a release form with Midway at the time of the videotaping. This agreement authorized Midway to film each plaintiff in a martial arts performance in order to use that plaintiff's name or likeness in connection with the manufacture, design, advertising, promotion, sale, and use of the coin-operated video games. The agreement also made Midway the sole and exclusive owner of all of plaintiffs' copyrightable expression, defining any such expression as "works for hire," and permitted Midway, at its sole discretion, to use plaintiffs' likeness in any copyright obtained in connection with the coin-operated arcade games.

At this juncture in the case, the remaining issues are common law right of publicity, copyright infringement, and common law quantum meruit. The court initially dealt with the common law right of publicity, finding that the right of publicity claim was preempted by federal copyright law. A state law is preempted when 1) the work in which the right is asserted is fixed in a tangible form and falls within the subject matter of copyright under § 102 of the Copyright Act, and 2) the right asserted is equivalent to any of the rights specified in § 106 of the Copyright Act. In this case, plaintiffs' images were videotaped and, as a result, became fixed in a tangible form (because plaintiffs' consented to the videotaping, the definition of 'fixed' is satisfied). Further, the choreographic works were all original works of authorship, and choreographic works fall within the subject matter of copyright. Finally, applying the § 106 test, the right of publicity is equivalent to one of the rights in § 106 because it is infringed by the act of distributing, performing or preparing derivative works. The right of publicity claim was therefore preempted.

The crux of the plaintiffs’ argument with respect to copyright infringement was that each plaintiff was a joint author of both MK and MKII, and defendants therefore owed an accounting to each plaintiff. Under 17 U.S.C. § 104, a joint work is defined as “a work prepared by two or more authors with the intention that their contribution be merged into inseparable or interdependent parts of the unitary whole.” However, There was never any intent for the plaintiffs to be joint authors, as evidenced by the “work make for hire” clause in the contract, and Midway at all times had control and final authority over what was used in MK and MKII. In addition, the court applied the copyrightable subject matter test, where in addition to the presence of intent, a collaborative contribution will not produce a joint work, and a contribution will not obtain a co-ownership interest, unless the contribution represents original expression that could stand on its own as the subject matter of copyright.

In analyzing the plaintiffs contributions, the court stated that “it is apparent to the court, in viewing videotapes of the actual games, that the superhuman gyrations and leaps high into the air of the characters, including plaintiffs' characters, are fanciful products of the imaginations of the creators of the source codes.” Thus, while the plaintiffs contributed their images and movements to the creation of the games, it was Midway alone that translated the ideas into a fixed, tangible expression entitled to copyright protection. The court thus denied the claim of copyright infringement.

Lastly, the court swept aside the remaining quantum meruit claim, noting that in Illinois a claim for quantum meruit cannot succeed where there is a valid, enforceable agreement between the parties, which there was in this case.