Thinking of writing a tell-all book of strategies for your favorite video game? You may want to think twice.
Publications International (“PIL”) published a book, entitled “Action Strategies for Mortal Kombat,” subtitled, “An Unauthorized Players’ Guide.” Midway, owners of the copyright and trademark registrations for the popular video game, promptly sued PIL for copyright infringement and trademark infringement. Midway’s Complaint referenced the 200+ game screen images from the book, the use of the trademark names “Midway” and “Mortal Kombat” in the book title and text, and the use of characters and character names from the game.
PIL moved to dismiss the copyright claims on the grounds that its use of names and photographs from the game constituted “fair use” under 17 U.S.C. § 107. This statutory defense to copyright infringement provides that, “the fair use of a copyrighted work … for purposes such as criticism, comment, news reporting, teaching, scholarship, or research, is not an infringement of copyright.”
Using the summary judgment standard, the Court denied almost all of PIL’s dismissal motions. Regarding the copyright infringement claim, the key issue was whether PIL’s book used a substantial portion of the copyrighted work to make it a derivative work. The determination of whether the borrowing was substantial requires a qualitative and quantitative review of the facts in the case. Accordingly, the Court denied summary judgment for copyright infringement, holding that PIL had not met its required burden of proving insubstantial borrowing.
Regarding trademark infringement of the name, “Mortal Kombat,” the Court also refuses to grant PIL’s summary judgment motion. The Court did not accept PIL’s argument that the front cover disclaimer, “An Unauthorized Players’ Guide” prevented any potential customer confusion as to the source of the book. Rather, the Court stressed that likelihood of customer confusion is another issue of fact, and that summary judgment is inappropriate until more discovery can be done.
However, regarding trademark infringement of the name “Midway,” the Court granted PIL’s motion to dismiss. The book did not mention Midway in the title or use Midway’s mark at all. In fact, only once in the book is Midway even mentioned, in a passage identifying them as the licensor of the home versions of the video game. The Court held that this usage, as a matter of law, is not trademark infringement.