Saturday, 28 March 2020

US court rules that unlicensed reproduction of NBA players' tattoos in their videogame avatars is not a copyright infringement

Are tattoos protected by copyright? If so, can a person give a third party permission to use their likeness (which includes displaying the tattoos attached to their body) without the consent of the tattoo artist who realized said tattoos?

These intriguing questions have been raised in a number of jurisdictions [see IPKat posts hereherehereherehereherehere; see also here for the (in)famous tattoo copyright headache surrounding The Hangover - Part II] though conclusive answers were not really provided … at least until very recently.

Earlier this week, in fact, the US District Court for the Southern District of New York issued its much-awaited summary judgment opinion (16-CV-724-LTS-SDA) in the (long-standing) proceedings initiated by a company (Solid Oak), which seemingly holds an exclusive copyright licence in the tattoos of NBA players Eric BledsoeLeBron James, and Kenyon Martin, against videogame developer and publisher Take-Two [see here for a recap; and here for a comment, also noting the potential effect of the decision in other pending cases].

The litigation related to the unauthorized reproduction of 5 tattoos in … the avatars of these athletes in the NBA 2K videogame (more precisely: the 2K14, 2K15, and 2K16 editions).

LeBron James (L) and his avatar in 2K16 (R)
The Court ruled that: (1) use of the tattoos in the videogame is to be regarded as de minimis; (2) an implied licence from the tattoo artists to the players had been granted; and (3) the use made of the copyright works qualifies as fair use under §107 of the US Copyright Act.

Let’s see more in detail what happened.


As mentioned, Solid Oak holds an exclusive copyright licence to each of the tattoos. Such licence was granted by the respective tattoo artists. However, Solid Oak is not licensed to apply the tattoos to a person’s skin, nor does it hold any publicity or trade mark rights to the aforementioned players’ likeness. Bledsoe, James, and Martin had licensed use of their likeness to NBA and had also granted Take-Two their consent to use such likeness in the videogame.

The 2K videogame contains features that “are designed to most accurately simulate the look and feel of an actual NBA game”, including the actual physical likeness of real-world players. 

In all this, viewers of the game do not see the tattoos clearly (if at all) during gameplay. Furthermore, the tattoos were not depicted separately from the players, nor were they relevant to the marketing of the videogame at all. Put it differently: the tattoos were not the reason why people purchased the videogame. Hence, according to the defendants, there would be no market for licensing use of the tattoos in a videogame.

Overall, the tattoos “comprise only a miniscule proportion of the video game data: only 0.000286% to 0.000431% of the NBA 2K game data is devoted to the Tattoos.”

De minimis use

Under US law, de minimis copyright infringement is not actionable. To this end, the alleged infringer must prove that the copying is “so trivial ‘as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying.’” 

‘Substantial similarity’ is to be assessed through the 'ordinary observer test', which considers “whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.”

The Court found that application of this test would lead to an answer in the negative in the present case. 

As such, the use made of the tattoos, which - when visible (though consistently out of focus and always moving together with the avatar) - are 4.4% to 10.96% of their real life size, would qualify as de minimis use: the works, stated the Court, “are indiscernible to the average game users.”

Implied licence

In addition, the Court found that the defendants had argued “persuasively” that there was an implied licence on the side of the tattoo artists to feature the tattoos as part of the players’ likenesses. 

The Court recalled that an implied non-exclusive licence 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.”. A “reasonable inference [would follow] that the tattooists necessarily granted the Players nonexclusive licenses to use the Tattoos as part of their likenesses, and did so prior to any grant of rights in the Tattoos to Plaintiff”.

In sum, if the players had given Take-Two the permission to reproduce their likeness, this would also be entitled to reproduce the tattoos covering their bodies.

Fair use

Take-Two had counterclaimed that in any case the use of the tattoos in the videogame would constitute fair use. 

The Court reviewed the 4 fair use factors – (1) purpose and character of the use; (2) nature of the copyrighted work; (3) amount and substantiality of the use; (4) effect on the market – and sided with Take-Two. 

With particular regard to (1), “the undisputed evidence demonstrates that Defendants’ use of the Tattoos is transformative” for a number of reasons, including inter alia with regard to the purpose of displaying the tattoos, which – in the videogame – is to represent the likeness of the players accurately.

Eric Bledsoe's avatar in NBA 2K14

The outcome of this long-running dispute appears sensible. 

The conclusion concerning de minimis use and fair use have particular relevance to videogame developers wishing to feature avatars of real-life sportspeople, celebrities, etc.

The conclusion concerning the implied non-exclusive licence has more general and broader significance.

The Court stated that "the tattooists necessarily granted" non-exclusive licences to use the tattoos as part of the customers' own likenesses, because the costumers:
  • requested the creation of the tattoos;
  • the tattooists created the tattoos and delivered them to their customers by inking the designs onto their skin, and 
  • the tattooists intended their customers to copy and distribute the tattoos as elements of their likenesses, each knowing that - in the case at hand - the players were likely to appear “in public, on television, in commercials, or in other forms of media.”
The customers were not requested nor did they agree to limit the display or depiction of the images tattooed onto their bodies, so that they had implied licences to use the tattoos as elements of their likenesses.

This finding:
  1. seems to close the door on any copyright-rooted requests from tattoo artists, their representatives or exclusive licensees concerning unauthorized reproductions of tattoos attached to the bodies of celebrities, athletes, etc; and
  2. clearly swings the pendulum in favour of protecting one's own ability to control the use (and exploitation) of their image as they see fit, at least when the reproduction of one's own image is the means through which the reproduction of a tattoo also occurs (things would be different if a tattoo was reproduced in isolation, as the Court also noted). 
[Originally published on The IPKat on 28 March 2020]

Monday, 16 March 2020

Free IP study/revision materials (also) in the time of Coronavirus: a collection

At home and studying IP?
The Coronavirus outbreak has been posing major challenges also to IP education, with many
university classes now moving or already moved online. 

Besides the rich IPKat archive, I would like to list in this post some free IP materials I have developed over time and which students/teachers are very welcome to use also at these challenging times.

Here we go:

Trade Marks
Online intermediaries
Student essays/theses

In addition to the above, there is also this Facebook group I created specifically for IP students (but, of course, everyone is welcome to join!) to share and comment on recent news items raising interesting IP issues.

At the end of the day ... andrà tutto bene! (everything will be alright). Greetings to The IPKat readers from Italy!

[Originally published on The IPKat on 16 March 2020]

Saturday, 14 March 2020

The broader teachings of the CJEU 'Fack Ju Göhte' decision: trade marks, freedom of expression, and ... other IP rights

In late February, the Court of Justice of the European Union (CJEU) issued its long-awaited [the Opinion of Advocate General (AG) Bobek, on which see here, had been released in July 2019] judgment in Constantin Film, C-240/18 P, aka the Fack Ju Göhte case concerning the interpretation of the morality absolute ground in EU trade mark (EUTM) law.

The decision is both interesting and important for a number of reasons, including trade mark law, the role of freedom of expression, and also ... copyright. 

Let’s see, first, what happened and, then, what the implications of the ruling are.


Can the sign ‘Fack Ju Göhte’, which is also the name of a successful German comedy (followed by two sequels) be registered as an EUTM?

Things have not proved easy for this application, initially filed in 2015 for a variety of goods and services in various classes under the previous Regulation [this absolute ground has however remained unaltered after the 2015 reform]. The EUIPO examiner refused registration on grounds that the sign applied for would be contrary to ‘accepted principles of morality’ under Article 7(1)(f) EUTMR.

The wording of this absolute ground, which cannot be overcome by, e.g., inherent or acquired distinctiveness of the sign at hand, states that:
1. The following shall not be registered: [...] (f) trade marks which are contrary to public policy or to accepted principles of morality
Subsequently, also the EUIPO Fifth Board of Appeal and the General Court (T‑69/17) upheld the initial EUIPO decision. 

A final appeal to the CJEU followed.

In his well-reasoned Opinion (which also offers valuable insights into the role of freedom of expression in trade mark law), AG Bobek advised the CJEU to to set aside the General Court's judgment and annul the decision of the Fifth Board of Appeal.

This is indeed what the Court did.


The Court began its analysis noting that the concept of ‘accepted principles of morality’ is not defined in the law. As such, it must (unsurprisingly) be interpreted in the light of its usual meaning and the context in which it is generally used.

Agreeing with the AG, the Court further observed that:
that concept refers, in its usual sense, to the fundamental moral values and standards to which a society adheres at a given time. Those values and norms, which are likely to change over time and vary in space, should be determined according to the social consensus prevailing in that society at the time of the assessment. In making that determination, due account is to be taken of the social context, including, where appropriate, the cultural, religious or philosophical diversities that characterise it, in order to assess objectively what that society considers to be morally acceptable at that time.
Moreover, [it] requires an examination of all the elements specific to the case in order to determine how the relevant public would perceive such a sign if it were used as a trade mark for the goods or services claimed.
In that connection […] it is not sufficient for the sign concerned to be regarded as being in bad taste. It must, at the time of the examination, be perceived by the relevant public as contrary to the fundamental moral values and standards of society as they exist at that time.
In order to establish whether that is the case, the examination is to be based on the perception of a reasonable person with average thresholds of sensitivity and tolerance, taking into account the context in which the mark may be encountered and, where appropriate, the particular circumstances of the part of the Union concerned. To that end, elements such as legislation and administrative practices, public opinion and, where appropriate, the way in which the relevant public has reacted in the past to that sign or similar signs, as well as any other factor which may make it possible to assess the perception of that public, are relevant. [at [39]-[42]]
In brief, the concept of ‘accepted principles of morality’:
  1. should be narrowly defined, in that only what is both ‘fundamental’ and in accordance with the ‘social consensus’ would qualify as such (in this sense, bad taste is not enough);
  2. may change over time;
  3. is to be assessed objectively, the benchmark being the perspective of a reasonable person with average thresholds of sensitivity and tolerance; and
  4. by taking into account all relevant factors at hand.
It follows that:
The examination to be carried out cannot be confined to an abstract assessment of the mark applied for, or even of certain components of it, but it must be established, in particular where an applicant has relied on factors that are liable to cast doubt on the fact that that mark is perceived by the relevant public as contrary to accepted principles of morality, that the use of that mark in the concrete and current social context would indeed be perceived by that public as being contrary to the fundamental moral values and standards of society. [at [43]]
*no caption needed*
In the present case, the relevant public (i.e. the German-speaking general public in Germany and Austria) would assimilate the mark, written with a different spelling resulting from a phonetic transcription in German of those terms, to the English phrase ‘fuck you’ along with the surname ‘Goethe’.

The “intrinsically vulgar” expression ‘fuck you’ could be used, not just with a sexual connotation, but also “to express anger, mistrust or contempt for a person.” 

According to the General Court, the fact that several millions of people had watched the film in cinemas would not mean that “the relevant public would not be shocked by the mark applied for”. The CJEU disagreed.

The General Court should have not conducted its assessment in abstracto, but should have rather taken into account:
  • the great success of the comedy of the same name amongst the German-speaking public at large;
  • the fact that its title does not appear to have caused controversy;
  • access to it by young people had been authorized; and
  • the Goethe Institute (the cultural institute of the Federal Republic of Germany, active worldwide and tasked, inter alia, with promoting knowledge of the German language) uses it for educational purposes.
All the above suggests that “the German-speaking public at large does not perceive the word sign ‘Fack Ju Göhte’ as morally unacceptable”.


As mentioned, the CJEU decision is important for a number of reasons, including in relation to trade marks, the role of freedom of expression (including in a commercial setting), and other IP rights.

Trade mark law
La Mafia restaurant chain

Starting with the trade mark law, the judgment emphasizes the need for a multi-factor assessment of a sign in order to determine whether it is actually contrary to ‘accepted principles or morality’ (I would say that the same is also true with regard to the ‘public policy’ assessment under Article 7(1)(f) EUTMR).

It follows that both the consideration and the application of this absolute ground should be rather characterized as relative (meaning: context-specific). 

In this sense, absolut(ist) statements like those found in earlier case law – including recently in the General Court decision in La Mafia Franchises, T-1/17 [Katpost here] – that “when a sign is particularly shocking or offensive, it must be regarded as being contrary to public policy or to accepted principles of morality, irrespective of the goods and services for which it is registered” should be (thankfully) significantly scaled down. 

In La Mafia Franchises, the General Court suggested that the assessment is to be conducted having regard “to the intrinsic qualities of the mark in question and not to circumstances relating to the conduct of the person applying for the trade mark” [at [40], also referring to several other decisions]

This approach is incorrect.

The CJEU decision has also the merit of bringing morality (and, I would argue, also public policy) back to where it belongs, ie an absolute ground that should be only considered in exceptional cases.

One of the ads 
at issue in Sekmadienis 
Fundamental rights: freedom of expression

From a fundamental rights perspective, the decision is also in line with recent case law of the European Court of Human Rights (ECtHR). 

Readers might for instance recall the recent judgment in Sekmadienis Ltd v Lithuania [Katpost here], in which the ECtHR considered that a prohibition to use in advertising the image of Jesus and Mary on grounds of public morals should be regarded as an undue compression of the applicants' own freedom of expression under Article 10 ECHR

Although that Court considered that the Lithuanian Government’s interference with the applicants’ freedom of expression under Article 10(2) pursued a legitimate aim, it concluded that such interference was not necessary in a democratic society. 

Indeed, the expressions at issue – despite that they had a commercial purpose and were not intended to contribute to any public debate concerning religion or any other matters of general interest – “at the outset … do not appear to be gratuitously offensive or profane, nor do they incite hatred on the grounds of religious belief or attack a religion in an unwarranted or abusive manner”. In this sense, the Lithuanian authorities not explained “why the reference to religious symbols in the advertisements was offensive, other than for the very fact that it had been done for non-religious purposes”. 

The ECtHR ruled that the Lithuanian authorities had failed to strike “a fair balance between, on the one hand, the protection of public morals and the rights of religious people, and, on the other hand, the applicant company’s right to freedom of expression.”

In line with the Opinion of AG Bobek and also the wording of the EUTMR (see recital 21), the CJEU decision acknowledges that freedom of expression does indeed play a role in trade mark law.

The works at issue in Deckmyn
Other IP rights: copyright and parody

The Fack Ju Göhte decision also offers valuable guidance in fields of IP that, like copyright, do not envisage express morality-based limitations, at least at the EU level (moral rights – notably the right of integrity - require a different discourse, as there is no formal EU harmonization in this regard).

In particular, the judgment might contribute to shedding light on a number of concepts, including that of parody under Article 5(3)(k) of the InfoSoc Directive.

So far, the concept of parody in CJEU case law has only been considered in Deckmyn, C-201/13 [Katposts here; see also here for an extended commentary I wrote a few years ago]

In that decision, the Court held that a parody that conveys a message that is discriminatory/racist may not be eligible for protection. Stating otherwise would contradict the requirement of a fair balance between the rights and interests of the author of the parodied work and the rights of the parodist. In these instances, the person who holds the rights to a work has a legitimate interest in ensuring that the work protected by copyright is not associated with the message conveyed by its parody.

This aspect is one of the most ambiguous aspects of the decision. 

The Court failed to elaborate on both (1) the legal grounds a copyright holder could use to object to a parody of this kind (the three-step test? the unharmonized moral right of integrity if the rightholder is also the author?) and (2) how the assessment is to be conducted.

The judgment in Constantin Film appears to offer a valuable interpretative aid with regard to (2), also because this part of the Deckmyn decision implicitly endorses the Opinion of AG Cruz Villalón in that case [Katposts here and here]

The AG had reasoned that, although a parody cannot be forbidden just because the author of the parodied work does not approve of it, parodies that transmit a message that is radically contrary to the deepest, fundamental, values of the society upon which the European public space is built should be prohibited [at [82]].

It appears that the type of assessment recommended by AG Cruz Villalón - and implicitly endorsed by the CJEU although without any particular elaboration - is substantially identical to that adopted (with greater elaboration) by the CJEU in Constantin Film

As such, the latter might also serve to appreciate whether and to what extent a 'disparaging' parody is to be considered protected by the relevant copyright exception or, instead, an infringement.

[Originally published on The IPKat on 14 March 2020]