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 here, here, here, here, here, here, here; 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 Bledsoe, LeBron 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.

Background

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.”

Kattoo

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

Comment

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]