Midway Manufacturing v. Publications International

Citation
Midway Manufacturing Co. v. Publications Int'l, Ltd., 1994 WL 188531 (N.D. Ill. May 12, 1994).

Factual Background
Midway Manufacturing Company (“Midway”), owns copyright and trademark registrations relating to the Mortal Kombat video game, which was originally developed as an arcade game. Midway granted licenses under its copyright for several companies to produce versions of the game to be compatible with home video game systems such as Nintendo and granted trademark licenses to allow those companies to use “Mortal Kombat” on their versions of the games. Defendant, Publications International, Ltd. (“PIL”), publishes a book named, “Action Strategies for Mortal Kombat,” and subtitled, “An Unauthorized Player’s Guide.” The book describes how to play the various home versions and teaches the reader such topics as the “Basic Fighting Moves” of each character. In this suit, Midway asserts that PIL’s use of photographs of over 200 video screen images infringes its copyright on the audiovisual material of the game. Midway also asserts that PIL is infringing its trademark by using Mortal Kombat in the book title and text. Last, Midway asserts a claim under the Lanham Act for false designation of origin based on PIL’s use of the characters and character names from the game.

Trial Court Proceedings
PIL moved to dismiss the copyright claims on the grounds that its use of names and photographs from the game constituted “fair use,” which is for purposes such as criticism, comment, news reporting, teaching, scholarship, or research, is not an infringement of copyright.”

The trial 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. Therefore, the trial 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 trial court also refuses to grant PIL’s motion for summary judgment. The trial 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. On the contrary, 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.

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.