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 § 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 § 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. § 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, § 2.07(B). Thus, the first condition for preemption has been satisfied.
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. 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 §§ 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. § 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).
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. § 101 (1994). In Erickson v. Trinity Theaters, 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, § 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)
, 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, 643 N.E.2d 245, 251, 205 Ill. Dec. 294 (Ill. App. Ct. 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.
May 28, 1997
Robert W. Gettleman
United States District Judge