n a complaint filed in the U.S. District Court for the Southern District of New York this month, a group of tattoo artists (through a licensing entity) sued the developer, publisher, and marketer of the immensely popular NBA 2K16 video game over digital depictions of tattoos the artists had inked on the real-life basketball players appearing in the game, including LeBron James and Kobe Bryant. Claiming violation of their exclusive right of public display under 17 U.S.C. § 106(5), the artist collective in Solid Oak Sketches, LLC v. Visual Concepts, LLC seeks monetary damages, costs and fees, and injunctive relief against production of the game and any further “public displays” of the tattoos. While it may seem outlandish at first blush, cases like Solid Oak Sketches are becoming more common.
No longer exclusive to bikers and rock stars, tattoos have become indelible staples of mainstream popular culture, and have, over the last decade or so, slowly worked their way into the legal world. In recent years several tattoo artists have filed copyright claims in federal courts against video game publishers and developers, movie studios, and even professional athletes in connection with on-screen depictions of their inked artwork. For instance, tattoo artist Christopher Escobedo sued video game maker THQ Inc. in 2012 for depicting a lion tattoo that Escobedo had inked into the chest of MMA fighter Carlos Condit. Probably the most well-known tattoo copyright infringement case is S. Victor Whitmill’s 2011 lawsuit against Warner Bros. Entertainment in Missouri federal court over the use of his tribal-inspired tattoo design – famously seen on Mike Tyson’s face – in the movie The Hangover Part II. In the movie, Ed Helms’s character Stu wakes up the morning after a rowdy bachelor party sporting a replica of Tyson’s tattoo on his face. While a St. Louis federal judge ultimately denied Whitmill’s request to enjoin the release of the film, she strongly suggested that the plaintiff was likely to succeed on the merits of his claim.
Despite all the interesting legal questions ripe for discussion, all of these prior cases settled out of court, and consequently there are no published judicial opinions directly addressing copyrights in tattoos. It appears the only jurist to have opined on the issue was the district judge presiding over the Whitmill case, who stated from the bench: “I don’t think there is any reasonable dispute that . . . the [Mike Tyson] tattoo itself and the design itself can be copyrighted.” Courts are likely to agree with this conclusion, as a tattoo is almost certainly the type of fixed and original pictorial/graphic work that is covered by copyright. The tougher – and as yet unanswered – questions will relate to ownership of the tattoo. Typically the author retains ownership of a work, and with it the exclusive rights to (among other things) copy, distribute, or publicly display the work. See 17 U.S.C. § 106. Absent certain exceptions, the tattoo artist would still own the copyright in the tattoo artwork even though the work is indelibly injected into another person’s skin.
But based on the culture and practices in the tattoo industry – and the expectations of artist and client – those who adorn themselves with ink are presumably given an implied license by the artist to go about their business without having to cover themselves at all times to avoid infringement. Even Mr. Escobedo conceded that while he is “the artist and the creator” of the tattoo, he is “not saying [he] own[s] [his clients’] skin.” The implied license between tattoo artist and bearer, so the argument goes, should not restrict individual freedoms, including the right to publicly display the tattoo as it appears on one’s body in real life, even in a commercial context, which for celebrities and athletes will often include TV, film, and video game appearances.
Indeed, Whitmill himself indicated that he was not opposed to Tyson’s use of the tattoo, including in the boxer’s appearance in the first installment of The Hangover and on Tyson action figures because “that’s his identity.” Whitmill would therefore be hard-pressed to oppose a digital rendition of Tyson (complete with facial tattoo) in a video game, especially because Tyson presumably would have to authorize the use of his likeness (as he must have done with respect to The Hangover and the action figure), and thereby at least impliedly sub-license the right to use the tattoo artwork to the game developer. While no court has yet adopted these implied license or implied sub-license theories, legal commentators seem to agree that the rules makes sense and that courts would likely concur.
Another possible defense for video game developers is the doctrine of de minimis infringement, which states that copying is not actionable if it is so “trivial” as to “fall below the quantitative threshold of substantial similarity.” Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625, 628 (S.D.N.Y. 2008). In determining whether the use of a visual work is de minimis, courts consider factors such as observability of the work, the length of time the work appears on screen, and prominence of the copyrighted work within the allegedly infringing work. See id. A colorable argument could be made that the copying of an individual tattoo in a video game is de minimis when the work appears on the body of one out of hundreds of characters depicted in the game; does not consistently appear on screen (e.g., when the tattooed character is not being used); and cannot plausibly be said to hold a place of prominence in the overall scope of the game. A similar argument could be made in the context of fair use. For instance, in Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006), the court held that the use of reduced-size reproductions of Grateful Dead posters in a biography of the band was fair because, inter alia, the copyrighted posters “constitute[d] an inconsequential portion” of the book under the “purpose and character of the use” prong of the fair use test.
In a perfect world, game-makers would not have to worry about these defenses; ideally, recognizable (or infamous) tattoo art prominently featured on screen would be vetted and, if necessary a waiver or license would be obtained prior to production and distribution of a game. But this may not be possible where, in a game like NBA 2K16, presumably dozens of players will have multiple tattoos. Alternatively, game developers could further mitigate their risks if the bearer of the tattoo has already procured an assignment, release, or waiver from the tattoo artist – as the NFL Players Association now encourages its players to do – and agrees to indemnify the game maker against third-party claims. This situation is also unlikely from a practical standpoint. In the absence of these transactional safeguards, it may be necessary to obscure or replace questionable tattoo art to the extent possible until such a time as the courts determine that the copying of tattoos in contexts like video games is de minimis, fair use, or subject to an unlimited implied license to the bearer with an implied sublicense for third-parties to copy the tattoo in on-screen depictions of the bearer. As the frequency of these cases increases, so too does the likelihood that the courts will put ink to paper and establish concrete guidance on tattoo copyrights.