Football season ended in the U.S. last Sunday with the Super
Bowl (Denver won), and baseball season (alas!) has not started yet. Basketball
season is in full bloom (go Knicks!), but will end in the Spring.
But basketball fans may assuage their end-of-season blues by
playing basketball video games all year long. These games features digital
versions of the current players, and thus are regularly updated. Last fall,
video game company 2K Games, Inc. (2K) released the 2016 version of its annual
basketball video game, NBA 2K16. Four million
copies were sold its first week on the market.
The game reproduces the likeness of basketball players. Some
of them, LeBron James, Kobe Bryant, Eric Bledsoe, DeAndre Jordan, and Kenyon
Martin sport tattoos in real life, and their digital representation sport the
same tattoos in the NBA 2K16 game, as they already did in the NBA 2K14 and the
NBA 2K15 games.
The design of these tattoos had been created by several
artists who later signed licensing agreements with Solid Oaks Sketches, LLC.
(Solid Oaks). Following the release of the NBA 2K14 and NB 2K15, Solid Oaks engaged
in a negotiation with 2K in July 2015, in anticipation of the September release
of NBA 2K16, as it believes that, by reproducing the tattoos in its video
games, 2K infringed Solid Oaks ’copyright.
The negotiation fell through and, on February 1, 2016, Solid
Oaks filed a copyright infringement suit in the Southern District of New York (SDNY)
against 2K, game publisher Take Two, and game developer Visual. The case is Solid Oaks Sketches, LLC. V. Visual Concept, LLC and
2K Games, Inc., and Take Two Interactive Software, Inc., 1:16-cv-00724.
Are Tattoos Protected
by Copyright?
The designs at stake are all registered with the Copyright
Office, as tattoo artworks. What about the real tattoos?
Plaintiff argues that tattoos are protected by copyright, as
they are “pictorial, graphic, and sculptural works” under 17 U.S.C. §102(a) (5).
Plaintiff also argues that tattoos are fixed in a tangible medium of expression,
noting that “the tattoos designs are
imprinted permanently upon the skin of humans, clearly stable and able to be perceived
for much more than a transitory duration” (at 28). Tattoos also satisfy the
“minimal degree of creativity” requirement set by the Supreme Court in Feist
Publications, Inc. v. Rural Tel. Serv.
Co.
Plaintiff cites an article by Yolanda M. King, The
Challenges Facing Copyright Protection for Tattoos to support its claim
but notes, however, that “[t]he issue of tattoo copyrightability has yet
to be decided upon in court due to numerous settlements preventing a final
judicial opinion.”
It seems that tattoos may be protected by copyright. Is there a defense available
to the Defendants?
Possible Defenses: Fair
Use and De Minimis
Fair use is a defense to a copyright infringement claim, and
the SDNY would look at the four fair use factors,
(1) purpose and character of the use, (2) nature of the copyrighted work, (3) amount
and substantiality of the portion used in relation to the copyrighted work as a
whole and (4) effect of the use upon the potential market for or value of the
copyrighted work to find whether the use of the tattoos was fair.
Defendants in this case could certainly claim that the
amount taken in relation to the video game was small enough to be fair. They
could even claim that the use of original work was so little that it does not
even warrant a review by the court, as de
minimis non curat praetor, the court does not concern itself with trifles.
However, plaintiff took care to note in the complaint that “On social media, 2K has promoted the
improved tattoo customization as a major feature in the game” (at 15) and
that “Game reviewers praised NBA 2K16’s improved
visuals, which included smoother looking character models and more
individualized tattoos” (at 16), and so probably stands ready to argue that
the use was significant, both quantitatively and qualitatively.
A Possible Defense: Terms
of Players’ Contracts with Their Tattoo Artists
Did the players themselves have a licensing contract with
the tattoo artists who applied the designs at stake on their bodies?
Indeed, sports agents should be well advised to explain to
their clients that sporting one or more tattoos may impede their ability to monetize
their image. While his tattoos make LeBron James an even more interesting player,
having a court find out that their reproduction infringes the right of a third
party would rather complicate the drafting of a (lucrative) agreement to
license his image.
Should players be advised to secure the exclusive right of
their tattoos before going under the inky needles? An author has argued
for the need of an implied license.
It has been reported
in 2013 that the National Football Association Players Association advised
agents to recommend that their clients secure a release from the tattoo artist,
and even to track down the artists who have done their previous tattoos to secure
such release as well. This advice was given following the Whitmill vs. Warner Bros. Entertainment Inc., 11-cv-00752 (E.D.
Mo.) case, where the tattoo artist who had created the highly original tattoo sported
by Mike Tyson filed a copyright infringement suit to prevent the release of The Hangover 2, where actor Ed Helms sports a similar tattoo.
The National Basketball Players Association will probably
issue similar advice following the 2K Games copyright infringement complaint,
if it has not done it already. Meanwhile, many IP attorneys are hoping the 2K16
case will not settle, so that the SDNY will have an opportunity to rule on
whether tattoos in general, and tattoos reproduced in video games in particular,
are indeed protected by copyright. It should not be a slam dunk case (sorry).
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