By: Jonathan T. Costello
What happens when a wildly popular video game franchise copies a real-world location? The Coral Castle Museum of Miami-Dade County, Florida recently brought a trademark infringement case against Epic Games, creator of Fortnite, for alleged trademark infringement.
The “real” Coral Castle and Coral Castle Museum are in Miami-Dade County in Florida. The Coral Castle was constructed in the 1940s and consists of hundreds of large limestones formed from coral, each weighing several tons. The Coral Castle has been compared as Florida’s Stonehenge.
Part of the interest in the Coral Castle has been a result of supernatural events and of the structure’s mysterious origin. The castle was created by Russian Empire immigrant, Edward Leedskalnin. Leedskalnin moved to Florida’s warm climate as a treatment for his tuberculosis. Over the next 20 years, Leedskalnin constructed the Coral Castle under the cover of darkness and moved hundreds of tons of limestones to create several stone structures in the surrounding area. When asked about how he constructed the structure, Leedskalnin would reply cryptically about knowing ancient knowledge of the pyramids, and contemporary legends cite to supernatural abilities and the use of “reverse magnetism.”
Epic Games, creator of the popular Fortnite game, is no stranger to litigation. Recently, Epic Games was sued, repeatedly, over the use of specialized dance moves. Additionally, Epic Games pushed back against Apple’s revenue policies. This recent suit, Coral Castle, Inc. v. Epic Games, Inc. is only the most recent legal conflict for Epic Games.
The key issue in the trademark suit, is whether Epic Games is profiting off the digital recreation of a real-world trademarked location. The suit specifies how Epic Games’ most popular product, Fortnite: Battle Royale, is a free-to-play game that has grossed over $1,000,000,000 in profit. Fortnite is broken into different chapters, or “seasons” that change over time. One recent season change featured new locations, including a location called “Coral Castle.” The suit highlights how virtual Coral Castle and real Coral Castle share common themes of beach and nautical motifs, castle structure, and large stone objects. The suit also highlights how both places evoke feeling of a “centuries old mysterious place”.
Coral Castle Inc. has brought causes of action for federal trademark infringement, dilution, and unfair competition; Florida common law unfair competition; violations of the Florida Deceptive and Unfair Trade Practices Act. Additionally, Coral Castle Inc. is seeking injunctive relief, damages, attorneys’ fees and costs. When analyzing similar cases, courts often look to First Amendment analysis on artistic expression. Courts often look to the Lanham Act when analyzing free speech and protected speech in artistic pursuits. The Rogers test allows “artistic or expressive works to make use of trademarks under most circumstances without facing liability under the Lanham Act.” The Rogers test balances a two-prong test, where the court must determine “artistic relevance” to the underlying work, and the second prong asks whether the use “explicitly misleads as to the source” of the content.
Coral Castle Inc. likely had good cause and a legitimate claim against Epic Games given the similarities between the virtual and real structures, naming, and general themes associated with the two Coral Castles. Courts have been reluctant to rule in favor of the infringed upon party. Similar to the Coral Castle case, there was a recent case involving AM General and Activision Blizzard, Inc., creators of the popular Call of Duty series of games. Call of Duty are military combat games and featured Humvees, an AM General vehicle manufactured for the United States Department of Defense. In that case, the court applied the Rogers test and determined that the use of the vehicles has artistic relevance. “Video games, like movies and television shows, can feature real-life trademarks that have artistic value to the work without paying for a license. To hold otherwise would allow private companies to dictate and limit others’ artistic expression and creative free speech giving trademark owners a ‘monopoly over reality.’”
Although Coral Castle’s case is likely strong if the court ruled in favor of the attraction. the court’s ruling would likely be narrow, limiting it to only this specific instance. Many video games, while striving for realism, seek to emulate and create convincing real-world facsimiles rather than attempt to create fully original locations. However, if taken fully to trial, the court likely would have followed the AM General v. Activision Blizzard case, concluding that video games are artistic expression can replicate real world locations without a license.
Ultimately, the case was withdrawn by Coral Castle Inc. Although Coral Castle Museum owns multiple trademarks associated with Coral Castle, they chose to voluntarily dismiss the case with prejudice, which often indicates an out of court settlement was reached.
Given Epic Games frequent litigation, it is unlikely that this is the first or last trademark case related to the Fortnite games.
Student Bio: Jonathan T. Costello is a second-year law student at Suffolk University Law School and a contributor for the Journal of High Technology Law. He is also the Treasurer of the Suffolk Law Business Law Association, and an intern for the Massachusetts Supreme Judicial Court. Jonathan earned a Bachelor of Arts degree in History from Trinity College where he completed a junior thesis on recidivism in the United States. Between undergraduate and law school, Jonathan worked in real estate and insurance while coaching rowing in the Boston area.
Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.
