Artist Beware NFTs and Breach of copyright.
This article is about the recent sale of the Artist Miltos Manetas’ NFT SuperMario Sleeping (with butterflies), 1997 on Artnet (we assume on or around the 21st December 2021) and the potential issues it can cause in regards to breach of copyright under English law.
In this article we are assuming Nintendo has not given a licence to Mr Manetas to use it copyright in the creation of SuperMario Sleeping.
The NFT is a recording of a sleeping Mario juxtaposed with butterflies surrounding him within the game Super Mario 64 together with in-game music. The video, 23 minutes long, is not edited or altered by any third-party software nor are the actions of Mario outside the bounds of the game. In short nothing occurs outside the game’s program, rules or visual template.
Before we discuss what IP rights of Nintendo’s are triggered, firstly we must consider what are the IP rights within a video game? As there is no specific IP protection for video games under English law, its IP rights and protections instead are expressed as a bundle of different rights under the Copyright Design and Patents Act 1988 (CDPA 88). These include:
- Coding/programs – attract a literary copyright under s3(1)(b) CDPA 88;
- Sound – the pre-recorded sound and music from a video are protected under s5A(1)(a) and/or (b) CDPA 88;
- Image – a recording of the game, will attract Artistic Works copyright in its stills under s4(1)(a) CDPA 88 and Nova Productions Ltd v Mazooma Games Ltd and others; Nova Productions Ltd v Bell Fruit Games Ltd  EWCA Civ 219, the “Nova Case”); and
- Dramatic work – video games have also been considered as dramatic works under s3(1) CDPA 88 and the Nova Case; and
- Film – the recording of any medium from which a moving image may by any means be produced (which includes video games) is in s5B(1) CDPA 88, this includes sound s5B(2) CDPA 88 (see the Nova Case).
The Nova Case gives further guidance on what IP rights apply to video games and what protections apply against copying. This is expanded on in Norowzian v Arks Ltd (No.1)  12 WLUK 325, Norowzian v Arks Ltd (No.2)  11 WLUK 107 and a brilliant article by Prof Yim Harn Lee, Play again? Revisiting the case for copyright protection of gameplay in videogames, European Intellectual Property Review, E.I.P.R. 2012, 34(12).
Taking the above into account, the NFT may breach the following copyright of Nintendo’s:
- Film (s5B(1) and (2)) – a recording of the video game with unaltered images and sound ;
- Image (s4(1)(a)) – still images which make up the video are also copyright protected;
- Dramatic works (s3(1)) – the video game itself can be also be seen as a dramatic work of art as set out in the Nova Case; and
- Sound (s5A(1)) – the video records the pre-recorded sounds of the game.
The explanatory notes to the NFT states that the purpose of SuperMario Sleeping is to be an artwork/recording of the game with a specific aim to capture an artistic expression within Super Mario 64. This practice is known as “machinima”. It is a “term that describes the use of existing video game environments to construct a cinematic narrative, machinima videos often have plot lines very different from the original intentions of the source game 1. ”
This practice of art or art movement is in our view highly likely to trigger the CDPA 88 and infringe on an existing copyright, where it seeks to commercially exploit unamended video game recordings. A third party who does not own the copyright is making money from it without the permission of the copyright holder. Mr Manetas has seemed to have done this by selling the NFT. What could Nintendo seek from Mr Manetas? They maybe tempted to seek damages for breach of copyright, an account of all profits made from the NFT, and in some circumstances their legal costs as well. This could very easily add up to a substantial sum, considering the NFT was meant to sell for circa 10.50 Eth (equals approx. to £30,000 as at 16.30 22.12.21)
Generally speaking, the golden rule in copyright infringement is: if there is direct commercial exploitation of the infringing material without, sufficient benefit for the party that owns the copyright, the copyright owner becomes very likely to want to take action to stop this. Twitch Streamers and Speedrunners are generally tolerated, they are not directly profiting from a video game’s IP, but showing it off and giving an extra lease of life to it by adding to the popularity, cultural and lifetime/continuation of a game. That does not at the moment seem to be the case with this NFT.
Does the NFT have its own unique copyright. To quote Lord Bingham in Designers Guild Ltd v Russell Williams (Textiles) Ltd  1 W.L.R. 2416 HL at 2418:
"[A]anyone who by his or her own skill and labour creates an original work ... shall ... for a limited period, enjoy an exclusive right to copy that work. No one else may for a season reap what the copyright owner has sown."
What has Mr Manetas created that is his own skill and labour? The camera angles? How Mario is utilised in the game? That is not sufficient to create something original as noting is created outside the bounds of Super Mario 64’s gameplay/IP. In our view, it is unlikely to constitute an original work and so does not have its own unique copyright.
An artist cannot create artwork in a vacuum and often borrow from real life references, in some cases these references will have IP protection.
Digital artists defend the use of third party IP in their creations by using Duchamp’s idea of the “Readymade”. The concept is about using real-life objects encountered to showcase an idea. In the case of Duchamp’s Urinal, where the idea was to subvert the object and as a consequence it brings into question what constitutes an artwork. However, this differs from video game NFTs such as this one, as the nature of the objects are different. Specifically, the Urinal is a physical object that could be used as a Urinal or a hat or building material or as any other physical object without breaching any inherent right in the Urinal, although it cannot be copied. A video game is data, which when you purchase either as a cartridge, CD or as downloaded/streamed item; is licenced to you and protected by copyright. The issue with this NFT is that has not gone far enough in subverting/changing the nature of the game, therefore in our view Mr Manetas is much more vulnerable to a copyright claim than a similar artist who heavily modifies or changes the references they are using.
As artists move into the digital space they will have to grapple with the issue of IP rights in much different settings than they are accustomed to. Digital artists should be alive to this issue and ensure they obtain appropriate legal advice when considering whether to tread on the toes of copyright holders.