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Moving the Needle Part II: Court Inks Decision in Favor of Defendants in Solid Oak Sketches, LLC v. 2K Games, Inc. (S.D.N.Y.)

By Scott J. Sholder

Four 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.