Thursday, May 7, 2020

Tattoos and Copyrights - Part II

            I previously wrote about the NBA 2K copyright lawsuit that involved reproducing the tattoos of famous athletes in video games a few years ago. Recently, the district court issued its opinion in the case, and it was in favor of the video game company.
            In 2016, Solid Oak Sketches, LLC sued the makers of the NBA 2K video game series. Solid Oak had acquired the exclusive license to a number of tattoo designs that were tattooed on famous basketball players, notably among them Lebron James, and it alleged the NBA 2K games infringed its copyright rights because the video game series recreated the tattoos on the athletes in the game.
            The court ruled that the use in the NBA 2K games was de minimis, there was an implied license, and it was a fair use.
In ruling that the use was de minimis, which means that the copying was trivial and did not create a substantial similarity between the works, the judge noted that the tattoos at issue were only on three players out of 400 available in the game, were hardly, if at all, visible or distinct during game play, and average game play was unlikely to include the players at issue.
The court also found that an implied license existed for the players to “use the Tattoos as part of their likenesses…”.[1] In determining the implied license, the court emphasized that

(i) the Players each requested the creation of the Tattoos, (ii) the tattooists created the Tattoos and delivered them to the Players by inking the designs onto their skin, and (iii) the tattooists intended the Players to copy and distribute the Tattoos as elements of their likenesses, each knowing that the Players were likely to appear “in public, on television, in commercials, or in other forms of media.”[2]    

Because the players had an implied license from the tattoo artists, that existed before the license granted to Solid Oak, and the players granted the NBA the right to exploit their likeness, 2K Games use of the players’ likenesses, including the tattoos, is not an infringement.
            Finally, the court found the use of the tattoos in the games to be fair use. In evaluating the fair use factors, the court found (i) the commercial use of the tattoos to be negligible, as they constituted a minor part of the game and were barely visible,[3] (ii) the tattoos at issue had limited expressive value,[4] (iii) even though the tattoos were copied in total, it was done to accurately depict the players, and the tattoos were barely visible in the game,[5] and (iv) there was no impact on the market value of the tattoos because video games are not a substitute for tattoos, and a market for licensing tattoos to be used in video games would be unlikely to develop.[6] 
            As I mentioned previously, this issue had been bubbling up for some time. While tattoos, generally speaking, are entitled to copyright protection, it had been an unanswered question of how far copyright protection would extend once the tattoo was on someone. This decision goes a long way in determining the scope of that protection. I think it is a solid decision, and, if appealed, I hope it is sustained.
            After reading it, however, I am concerned about the emphasis on how the tattoos are barely visible in the game. This leaves open possible arguments that if the tattoo is visible, or featured prominently, such as in a portrait of a tattooed subject, then it could be an infringement. Hopefully, the implied license theory outlined in this decision would continue to protect an artist in such a situation. 
            Until the decision is upheld on appeal, it is still risky to recreate tattoos without permission. As I mentioned previously, if you are a celebrity whose likeness is likely to be recreated, obtain a waiver or assignment of any copyright rights the tattoo artist may have. If you are someone creating a work incorporating a tattooed subject, either have them indemnify you from harm, if it is commissioned, or proceed with caution, as the law regarding accurate recreations of tattooed individuals is still unsettled.

[1] Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-CV-724-LTS-SDA, 15 (S.D.N.Y. 2020).
[2] Id.
[3] Id. at 17-19.
[4] Id. at 20.
[5] Id. at 21.
[6] Id. at 22.