GETTLEMAN, District Judge.
Plaintiffs Philip Ahn, Elizabeth Malecki, and Katalin Zamiar bring this
seven count action against defendants Midway Corporation ("Midway"),
Williams Electronics Games, Inc. ("Williams"), Acclaim Entertainment,
Inc. ("Acclaim"), Nintendo of America, Inc. ("Nintendo"),
and Sega of America, Inc. ("Sega"), alleging infringement of the
common law right of publicity, and violations of: Section 43(a) of the Lanham
Act; the Illinois Consumer Fraud and Deceptive Practices Act; the Illinois
Uniform Deceptive Trade Practices Act; and, the Copyright Act of 1976,
along with one count under common law quantum meruit. Plaintiffs seek a
constructive trust on all moneys defendants received and continue to receive
from the alleged breach of their duty to plaintiffs. Defendants have filed
a motion for summary judgment on all counts. For the reasons set forth
below, defendants' motion is granted.
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. Midway
designs, manufactures, and sells coin-operated amusement games and licenses
home video games, including Mortal Kombat and Mortal Kombat II, to which
Midway owns the copyright to the computer program and related audiovisual
materials. Williams acts in conjunction with Midway in designing, manufacturing,
and selling coin- operated video games. Acclaim manufactures software for
use in Nintendo and Sega hardware systems for home video games. Nintendo
and Sega design, market and sell home video games.
Plaintiffs' versions of the events that lead to their association with
Midway are essentially identical. All plaintiffs allege 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 character in the coin-operated arcade format of Mortal Kombat and
Mortal Kombat II. Plaintiff Malecki modeled the character Sonja Blade for
Mortal Kombat. Plaintiff Ahn modeled the character Shang Tsung in the coin-operated
version of Mortal Kombat II, while plaintiff Zamiar modeled for three characters,
Kitana, Mileena, and Jade, all of whom appeared in Mortal Kombat II. Plaintiffs'
movements were videotaped by Midway and these images were eventually digitalized
and incorporated into the coin-operated arcade games.
All plaintiffs 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.
Plaintiffs allege that they were required to sign the release in case of
injury and that Midway lead them to believe that only a small number of
arcade games were being contemplated. However, in the event the game proved
successful, they were told they would receive bonuses, or if the coin-operated
versions of the game developed into ancillary uses, plaintiffs would receive
royalties, and would be considered for movie parts, personal appearances
and television commercials. Plaintiffs allege that based on these representations
they all signed the agreement, which the parties refer to as the General
Release.
The arcade version of Mortal Kombat and its successor, Mortal Kombat II,
proved to be successful. In September, 1993, Acclaim, Nintendo and Sega
released the home video game version of Mortal Kombat, and in September,
1994, they released the home game version of Mortal Kombat II. In April
of 1994, all plaintiffs attended a meeting with agents of Midway and Williams.
At this meeting plaintiffs were promised what plaintiffs have termed "wonderful
opportunities" if they signed an additional agreement, known as the
Non- disclosure Agreement and Release. Plaintiffs allege that at this meeting
they were informed that various companies were interested in utilizing plaintiffs'
images in various products and commercial endorsements. All three plaintiffs
refused to sign this second agreement.
Plaintiffs' seven count complaint against defendants is based on the alleged
unauthorized use of their names, persona and likenesses in connection with
the home video, home computer, and hand-held versions of Mortal Kombat and
Mortal Kombat II. Plaintiffs' response to defendants' motion for summary
judgment indicates that they do not contest defendants' motion on the counts
dealing with the Lanham Act (Count II), the Illinois Consumer Fraud and
Deceptive Practices Act (Count III) and the Illinois Uniform Deceptive Trade
Practices Act (Count IV). Accordingly, the only counts remaining are Count
I alleging infringement of the right of publicity, Count V alleging violation
of the Copyright Act of 1976, and Count VII, the common law quantum meruit
count.
I. Summary Judgment Procedure
Rule 56(c) of the Federal Rules of Civil Procedure provides that a summary
judgment "shall be rendered forthwith if the pleadings, depositions,
answers to interrogatories, and admissions on file, together with the affidavits,
if any, show that there is no genuine issue as to any material fact and
that the moving party is entitled to a judgment as a matter of law."
The court must consider the facts and all reasonable inferences drawn therefrom
in the light most favorable to the nonmovant, and any doubts as to whether
a genuine factual dispute exists must be resolved in favor of the non-moving
party. New Burnham Prairie Homes, Inc. v. Village of Burnham, 910 F.2d
1474, 1477 (7th Cir.1990). However, once the movant has satisfied its initial
burden, the nonmoving party then has the burden of coming forward with evidence
demonstrating that there is a genuine issue to be tried to the factfinder.
Id. A fact is genuinely in dispute when "the evidence is such that
a reasonable jury could return a verdict for the nonmoving party."
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510,
91 L.Ed.2d 202 (1986).
II. The Right of Publicity
In Count I plaintiffs allege that defendants' unauthorized use of their
names, personas, and likenesses violated their common law right of publicity.
Defendants argue both that the right of publicity is preempted by the Copyright
Act of 1976, 17 U.S.C. s 301(a), and that plaintiffs have not satisfied
the requirements for a claim under the right of publicity. [FN1]
A state claim is preempted by the Copyright Act if two elements are satisfied.
First, the work in which the right is asserted must be fixed in a tangible
form and fall within the subject matter of copyright under s 102 of the
Act. Second, the right asserted must be equivalent to any of the rights
specified in s 106 of the Act. Baltimore Orioles, Inc. v. Major League Baseball
Players Ass'n, 805 F.2d 663, 674 (7th Cir.1986). Section 102 sets forth
three conditions for copyrightability. First, the work must be fixed in
a tangible form; second, the work must be the original work of authorship;
and third, the work must come within the subject matter of copyright. Baltimore
Orioles, 805 F.2d at 668. Under s 106, the copyright owner has certain
rights including reproduction, the preparation of derivative works, and
distribution. A state claim is equivalent to one of the rights asserted
under the Copyright Act if it is violated by the exercise of any of the
rights set forth in s 106. Baltimore Orioles, 805 F.2d at 676. In Baltimore
Orioles, the Major League Baseball Players Association asserted that the
telecasts of Major League Baseball games were made without the players'
consent, and that the telecasts misappropriated the players' property right
in their performances. The plaintiffs, representing the Major League baseball
clubs, brought an action seeking declaratory judgment that the clubs possessed
the exclusive right to broadcast the games and the exclusive right to the
telecasts. Id. at 665.
Applying the two-part test, the Seventh Circuit held that the baseball
clubs' copyright in the telecasts preempted the players' right of publicity
in their game time performances. The court held that the first condition
for preemption, fixation in a tangible form, was satisfied because the telecasts
of the baseball games were recorded simultaneously. Id. at 674. The court
then examined whether the right of publicity was equivalent to one of the
rights specified in s 106 of the Copyright Act. The court held that because
the right to broadcast telecasts of the games infringes on the players'
right of publicity in their performance, and because the right of publicity
does not differ in kind from copyright, the players' right was equivalent
to one of the rights encompassed in s 106 of the Copyright Act. Accordingly,
because both elements of preemption were satisfied, the players' state claim
under the right of publicity was preempted. Id. at 677.
In the instant case, plaintiffs' images were videotaped and, as a result,
became fixed in a tangible form. To be fixed in a tangible form, the work
must be recorded by or under the authority of the author. 17 U.S.C. s 101
(1994). Because plaintiffs' consented to the videotaping, the definition
of 'fixed' is satisfied. Further, the choreographic works were all original
works of authorship. Finally, choreographic works fall within the subject
matter of copyright. See, Nimmer on Copyright, s 2.07(B). Thus, the first
condition for preemption has been satisfied. [FN2]
Applying the s 106 test, the right of publicity is equivalent to one of
the rights in s 106 because it is infringed by the act of distributing,
performing or preparing derivative works. Thus, plaintiffs' claim is preempted.
III. Copyright Act of 1976
In Count V of their complaint, plaintiffs allege that defendants, in filing
and securing an exclusive copyright to the exclusion of plaintiffs, unlawfully
appropriated plaintiffs' choreographic work. Plaintiffs further allege
that defendants violated the copyright laws when they reproduced plaintiffs'
protected expression, and ask this court to grant a permanent injunction
pursuant to ss 502-506 of the Copyright Act prohibiting all defendants from
using plaintiffs' choreographic works, personas, names and/or likenesses.
In the alternative, plaintiffs ask that this court find that the software
for Mortal Kombat and Mortal Kombat II are joint works, as evidenced by
their limited release.
Defendants correctly argue that Midway's certificates of registration
from the Copyright Office constitute prima facie evidence of the validity
of their copyright, and upon introduction of the certificates the burden
shifts to the party challenging the invalidity of the copyright to overcome
this presumption and affirmatively demonstrate invalidity. Fonar Corp.
v. Domenick, 105 F.3d 99, 101 (2nd Cir.1997). Defendants argue that because
plaintiffs have failed to rebut this presumption, they are entitled to summary
judgment. In addition, defendants argue that because defendants Midway
and Williams alone developed the source code for the games--and it was that
source code that was copyrighted--those defendants must, as a matter of
law, be considered the sole authors of the work.
Under federal copyright law, if a work is considered "joint"
the joint authors hold undivided interests in the work. 17 U.S.C. s 201
(1994). Each author, as a co-owner, has the right to use or to license
the use of the work, subject to an accounting to the other co-owners for
any profits. See Napoli v. Sears, Roebuck & Co., 874 F.Supp. 206, 209
(N.D.Ill.1995). [FN3]
Thus, this court must determine whether plaintiffs and defendant Midway
are to be considered joint authors in the computer program that incorporates
plaintiffs' performances.
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." 17 U.S.C. s 101 (1994).
In Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir.1994), a playwright
successfully sought to enjoin a theater whose actors had contributed ideas
to the plaintiff's copyrighted plays and videotapes from performing these
plays without license from the plaintiff. The Seventh Circuit adopted Professor
Goldstein's copyrightable subject matter test to determine the issue of
joint authorship. Under this standard, "[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." Id. at 1070.
In addition, the Goldstein test requires that the parties must have intended
to be joint authors at the time the work was created. The intent requirement
is satisfied if the parties intended to merge their respective contributions
into a single whole. The mere fact, however, of contemporaneous input into
the copyrighted work does not satisfy the statutory requirement of intent.
"To qualify as an author, one must supply more than mere direction
or ideas. An author is the party who actually creates the work, that is,
the person who translates an idea into a fixed, tangible expression entitled
to copyright expression." Erickson, 13 F.3d at 1071. As to the requirement
of fixation, s 101 states: "A work is 'fixed' in a tangible medium
of expression when its embodiment in a copy or phonorecord, by or under
the authority of the author, is sufficiently permanent or stable to permit
it to be perceived, reproduced, or otherwise communicated for a period of
more than transitory duration." Id.
In Erickson, the Seventh Circuit held there was no intent between the playwright
and the theater to be joint authors at the time the plays were written.
The court relied on certain factors to determine the absence of joint authorship.
First, the works were largely created before the actors offered their improvisations.
Second, final contents of the plays, including which suggestions to be
incorporated, were solely determined by the playwright. Third, neither the
playwright nor the theater considered the actors to be joint authors. Based
on these factors the court in Erickson ruled that the defendants could not
overcome the presumption in favor of the plaintiff's copyright.
In the present case plaintiffs incorrectly assert that they are co- authors
of the copyrighted work. First, plaintiffs offer no evidence to rebut Midway's
affidavit that it never considered plaintiffs to be collaborators or joint
authors of the games. More importantly (since plaintiffs correctly point
out that it is difficult to come up with hard evidence to rebut a self-serving
statement of intent) [FN4],
Midway's agents had the final authority to decide on the selection of movements
and poses that would be recorded during the videotaping session as well
as the authority to decide which frames of the videotape and in what manner
and order the frames would be incorporated into the computer program that
drives the game.
Indeed, Midway alone decided which portions of plaintiffs' "performances"
to digitalize and alone transformed the video images into the cartoon-like
images in the game. 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--much like the playwright's
penmanship in Erickson. To be sure, according to their testimony, plaintiffs
contributed their images and movements to the creation of the games, but,
like the actors in Erickson, that contribution was transitory. It was Midway
alone that translated the ideas "into a fixed, tangible expression
entitled to copyright protection." Erickson, 13 F.3d at 1071.
Finally, the general release signed by all plaintiffs made Midway the sole
and exclusive owner of all plaintiffs' copyrightable expression in connection
with the coin-operated arcade games and stipulated that plaintiffs' efforts
were "works for hire." Plaintiffs have conceded that this agreement
partially governed their relationship with respect to the production of
the arcade games. It is also uncontested that the source codes (that are
the subject of Midway's copyright) for the arcade games are the same source
codes used in the hand-held and home video versions. It is hard to see
how plaintiffs could have conveyed any and all their rights with respect
to the original source codes, yet retain additional rights when that same
code is used in another application.
Accordingly, this court concludes that the uncontested facts demonstrate
that plaintiffs cannot prove that they are joint authors of the copyrighted
source codes. Summary judgment will therefore be entered for defendants
on Count V.
IV. Quantum Meruit
In Count VII of their complaint plaintiffs request the reasonable value
of their services and royalties under the common law theory of quantum meruit.
Quantum meruit "is based on the premise that a party should not be
permitted to retain the benefit of services provided by another if such
retention 'violates the fundamental principles of justice, equity, and good
conscience.' " Industrial Specialty Chemicals v. Cummins Engine Co.,
918 F.Supp. 1173, 1179 (N.D.Ill.1996). To be successful on a claim under
quantum meruit, a party must prove performance of the services, reasonable
value of the services, and a benefit received by the defendant without paying
the complaining party. Id. Under Illinois law, however, the law which governs
this dispute, a plaintiff cannot pursue a quasi-contractual claim where
there has been an enforceable express contract between the parties. Barry
Mogul & Assocs. v. Terrestris Development Co., 267 Ill.App.3d 742, 205
Ill.Dec. 294, 300, 643 N.E.2d 245, 251 (1994).
In the instant case, plaintiffs' claim under quantum meruit must fail
because a valid, enforceable agreement existed between the parties. Contemporaneously
with the videotaping of their performances, all plaintiffs signed the General
Release. Under the terms of that document, plaintiffs received valuable
consideration in exchange for, among other things, allowing defendants to
videotape their performances and incorporate those performances into the
arcade games. Thus, defendants are entitled to summary judgment on Count
VII.
For the reasons set forth above, defendants' motion for summary judgment
on all counts is granted.
FN1. Because the court
concludes that plaintiff's publicity claim is preempted, it need not reach
defendant's assertion that they are entitled to judgment on the claim because
plaintiffs cannot demonstrate that they had acquired any value in their
names or likenesses. The court notes, however, that an issue of fact exists
as to whether plaintiffs had acquired such value through defendants' promotion
of the arcade games, prior to the alleged misappropriation.
FN2. Even if plaintiffs
argue that it is their performance in which they claim a right and not the
videotape of the performance, the plaintiffs' claim must still fail. In
Baltimore Orioles, plaintiffs' claimed a right in their performances, and
not in the telecast. Baltimore Orioles, 805 F.2d at 674. The court, however,
held that because the performances were embodied in a copy, the performances
were fixed in a tangible form and thus satisfied the definition of 'fixed'
under 17 U.S.C. s 101. Id. at 675.
FN3. In Napoli,
this court had occasion to review the law governing joint authorship of
computer programs and graphics. Although that opinion was later withdrawn
for other reasons, 926 F.Supp. 780 (N.D.Ill.1996), the analysis discussed
therein is a useful reference for purposes of the instant case.
FN4. Midway, however,
has presented some hard evidence of its intent that plaintiffs not be considered
joint authors. The Release Agreement specifically identified each plaintiff's
contributions as a "work for hire." This document, prepared and
signed contemporaneously with plaintiffs' performances, clearly indicates
defendants' intent that plaintiffs not be considered joint authors. Erickson,
13 F.3d at 1072. In their complaint plaintiffs suggest that they were "induced"
into signing the general releases. Plaintiffs have failed, however, to
plead a separate claim for fraudulent inducement, and their attorney candidly
admitted at oral argument that they could not prove such a claim.