our years ago, we reported on a headline-worthy copyright infringement lawsuit filed in the U.S. District Court for the Southern District of New York dealing with tattoos in video games. The case was brought by a licensing entity for tattoo artists against the makers of the popular NBA 2K games over depictions of real-life basketball players’ tattoos on their digital game avatars. Last week, after full discovery and extensive motion practice, Judge Laura Taylor Swain granted the defendants’ summary judgment motion dismissing the plaintiff’s copyright infringement claim on grounds of de minimis use and implied license and granted their cross-motion for a declaration that the depiction of the tattoos in the game constituted fair use. This was the result that we speculated as being the likely outcome in light of the dearth of on-point case law, and it seems to be the correct decision both as a legal and practical policy matter.
2K Games’ NBA
2K series is an annual blockbuster that simulates professional basketball
with lifelike depictions of teams, players, arenas, and the sights and sounds
of a real NBA game. The goal is a
realistic and faithful rendering of the NBA experience. One of the lifelike aspects of the game is
the re-creation of players’ distinctive tattoos. Plaintiff claimed that five tattoos for which
it owns rights were depicted on NBA players Eric Bledsoe, LeBron James, and
Kenyon Martin in the 2014-2016 versions of the game and that such public
display violated the Copyright Act of 1976.
Solid Oak owns an exclusive license to the five tattoos but does not
have permission to recreate them and does not have publicity or trademark
rights in the NBA players’ likenesses.
On the other hand, the players provided the NBA with the right to
license their likenesses to third parties, and the NBA granted such a license
to defendants.
The court described the tattoos and explained that, for each one, the tattoo artist “knew and intended that when” the NBA player receiving the tattoo “appeared in public, on television, in commercials, or in other forms of media, he would display” the tattoo; that the artist intended that the tattoos would “become a part of [the player’s] likeness”; and that the player “was and is free to use as he desire[d], including allowing others to depict it, such as in advertisements and video games.” The artists also admittedly knew that the men at issue were NBA players and would likely appear in the media, as well as in video games.
These
admissions by the artists were critical to the court’s decision concerning
implied license, a critical defense in the context of tattoo copyrights. An implied license can be found “where one
party created a work at the other’s request and handed it over intending that
the other copy and distribute it.” The
court held that such was the case here, explaining that that tattooists
admittedly granted the NBA players nonexclusive licenses to use the art as part
of their likenesses, prior to granting any rights to Solid Oak, and in turn,
the players (through the NBA) implicitly granted defendants the right to depict
the tattoos as part of their likenesses.
The court
also spent significant time explaining its de minimis infringement ruling. To prove copyright infringement, the
plaintiff must prove that the amount copied was not “so trivial as to fall
below the quantitative threshold of substantial similarity.” To make this determination, the court analyzed
the amount copied; the length of time the work can be seen; and other factors
such as focus, lighting, and prominence, as seen through the eyes of an
ordinary observer. The court held that
all three factors weighed definitively in favor of the defendants and that “no
reasonable trier of fact could find the Tattoos as they appear in NBA 2K to be
substantially similar to the designs licensed to Solid Oak.”
Laying
the foundation of its analysis by describing the many graphical, visual,
auditory, and dramatic elements of the 2K games, the court put the
overall prominence of the tattoos into stark relief. The five tattoos comprised between 0.000286%
and 0.000431% of the total game data; were never depicted separately from the
players (who comprised only 3 out of over 400 avatars); appeared between 4.4%
and 10.96% of their actual size; and were only visible when a user selected a
particular player, and even then were not fully visible, and were
indecipherable during actual gameplay given the speed and erratic nature of the
avatars’ movement. The court, agreeing
with the defendants’ statement of undisputed facts, characterized the tattoos
as appearing as nothing more than “visual noise,” and found that, even in the
rare event the tattoos were displayed, such display was “small and indistinct”
and “cannot be identified or observed.”
Finally,
the court engaged in a fair use analysis, holding that all four statutory
factors weighed in defendants’ favor. As
to the first factor (purpose and character of the use), the court held that the
defendants’ use was undisputedly “transformative,” a critical element of fair
use. While the games depicted exact
copies of the tattoos, its purpose in doing so was not the same as the tattoos’
original purposes of self-expression through body art. Rather, defendants depicted the tattoos to
accurately depict the players, notably without even making the details of the
tattoos observable. Moreover, the size
of the tattoos was significantly reduced and distorted, such that the game
offered no “more than a glimpse” of the tattoos’ expressive value and made up
an “inconsequential portion of NBA 2K” on the whole. And while NBA 2K was undoubtedly a commercial
product, the tattoos were incidental to the commercial value of the game and
were not used in the game’s marketing.
The
court’s analysis of the second factor (nature of the copyrighted work), was more
detailed than a typical analysis of this element of fair use. The second factor asks whether the work is
more expressive/creative or factual, and whether the work is published or
unpublished, and is typically glossed over by courts as immaterial to the
analysis. While the published nature of
the tattoos tipped the second factor in defendants’ favor, the court went on to
hold that the tattoo designs themselves were actually more factual than
expressive “because they are each based on another factual work or comprise
representational renderings of common objects and motifs that are frequently
found in tattoos.” Downplaying the
creative and expressive nature of each of the tattoos based on the
circumstances behind their creation, the court observed that the tattooists had
admitted that each work “copied common tattoo motifs or were copied from
designs and pictures [the artists] themselves did not create.”
The third
factor (amount and substantiality of the work used) is also typically glossed
over, and this case was no exception.
The court noted that even copying the entire work sometimes will fail to
weigh against fair use where, as here, the use is deemed transformative. Even so, the court reiterated that the tattoo
renditions were reduced in size and barely recognizable on the game screen.
The fourth
factor (effect of the allegedly infringing work on existing or potential markets
for the work) tends, like the first factor, to receive more weigh in the
analysis, and the court found this factor to definitively favor
defendants. The court held that the
game’s depiction of the tattoos was not a competing substitute for the
original. In light of the “transformative”
use of the works, the tattoos featured in the games would not serve as market
substitutes for the use of the tattoos in any other medium, and plaintiff even
conceded that NBA 2K was not a market substitute for the tattoos. The court therefore decided that potential
purchasers of the tattoo designs were unlikely to “opt to acquire the copy [in
the game] in preference to the original.”
Even so, the court found that there was no evidence in the record that a
market for licensing tattoos for use in video games or other media was likely
to develop.
While the Solid Oak case proceeds because
defendants’ counterclaim for fraud on the Copyright Office remains in play, a
solid precedent has been set in the new frontier of tattoo-based copyright
law. While it is not yet binding (and
would only be regionally binding if affirmed on appeal), this decision will be
extremely important to digital media companies nationwide given its solid legal
analysis and common-sense reasoning. The
Solid Oak opinion should be at the top of this year’s cases-to-know list
when it comes to content clearance, vetting, and risk assessment, and should
ease the concerns of those scratching their heads when facing the potential
licensing nightmare that could arise from attempting to clear all body art
depicted in popular media. It will also
likely prove to be a boon to the stock image industry during an era when
tattoos are increasingly common and may appear in more images of people than
ever before. On the other hand,
artists, and tattoo artists especially, may decry the opinion, in particular
the second-factor analysis, which may be interpreted as diminishing the
copyrightability of tattoos that depict certain “typical” artistic elements
like faces, flames, wizards, and sports equipment. But it is important to note that the ruling
on that factor was context-specific, and every work of art will be different
and will be created under unique circumstances.
Overall, any feared risk to future creators is minimal and is
significantly outweighed by the practical benefits afforded to established as
well as new and developing forms of media.
Filed in: Copyright, Entertainment, Games, Legal Blog, Litigation, Photography / Arts / Design, Publishing
March 30, 2020