Who Owns the Ink?

Author: Jill Ormond

U.S. copyright laws provide creators the rights to (1) reproduce a work, (2) prepare derivative works, (3) distribute copies of the work, (4) publicly perform the work, and (5) publicly display the work. 17 U.S.C. § 106.

Questions related to these rights arise when an artist creates a tattoo either from his/her design or with input from the client and then inks the tattoo on the client. What rights does the artist retain? Do any of the rights pass to the tattoo recipient? If so, what rights pass? With the increasing popularity of tattoos inked on people including celebrities who frequently appear in public and whose images are reproduced, these questions are becoming legal questions for courts to consider. Most recently, the United States District Court Southern District of New York considered these issues in Solid Oak Sketches, LLC (“Solid Oak”) v. 2K Games, Inc. and Take-Two Interactive Software, Inc. (“Take-Two”), Case No. 16-CV-724-LTS-SDA. See March 26, 2020 Memorandum Opinion and Order.

Solid Oak obtained exclusive copyright licenses from tattoo artists for five tattoos the artists inked on professional basketball players Eric Bledsoe, LeBron James, and Kenyon Martin. One tattoo was based on a photograph provided by a player, the other tattoos included traditional tattoo images (grim reaper, flames, basketball, stars, script, and numbers). Each was created with input from the player. The license agreement was done after the designs had been inked on the players. The rights Solid Oak licensed were not for the application of the tattoos to a person but for use in a clothing line that never came to fruition. According to the case record, Solid Oak’s owner testified that before moving forward with selling apparel he would “need permission from the players . . . to not infringe on their right of publicity.”

Take-Two is a video game developer that annually releases a basketball simulation video game that includes realistic renderings of NBA teams and players. Take-Two licenses its rights to depict the logos, uniforms, and players’ likenesses in their video games from the NBA. Solid Oak alleged that Take-Two infringed its copyrights by including the five tattoos on NBA players Eric Bledsoe, LeBron James, and Kenyon Martin appearing in its video games. After licensing the tattoo designs from the artists, Solid Oak sought to impose an obligation on the NBA players and the video game developer working with them to obtain permission from, and pay license fees to, Solid Oak because the players were realistically depicted with their tattoos in video games.

After years of discovery, experts, motions, and analysis, Defendants moved for summary judgment arguing four points. Take-Two’s initial argument was its use of the tattoos was de minimis because the tattoos were but a “fractional, fleeting part” of the game “‘creating realism’ but no more noticeable than a simulated player’s nose shape or hairstyle.’”

Take-Two next contended that its use of the tattoos was authorized by an implied license because both the tattoo artists and players understood when the tattoos were inked the players had the right to display and recreate the tattoos as part of the player’s likeness. Take-Two supported this argument with declarations from each of the tattoo artists. Also supporting this argument, Defendants established that the players gave the NBA the right to license their likeness. The NBA in turn licensed the right to the players’ likenesses to Take-Two.

Take-Two’s third argument was that judgment should be granted on its counterclaim because its use of the tattoos constituted fair use with each of the four factors—“(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work”—weighing in its favor.

Finally, Take-Two argued Solid Oak’s infringement claim failed because it could not establish ownership of a valid copyright since the tattoos were not independently created by the author. Instead, it presented evidence that the tattoos were copies of pre-existing works or included common elements of tattoos.

The court found Take-Two’s de minimis argument persuasive considering the average game play is unlikely to include the players with tattoos, and even when the players were included, the display of the tattoos was so small and indistinct that they could not be identified or observed. The court also noted that the tattoos were not featured in the game’s marketing materials.

Take-Two’s argument that it had an implied license for use of the tattoos because the tattoos were part of the players’ likenesses was also well-taken. Citing Weinstein Co. v. Smokewood Entm’t Grp., LLC, 664 F.Supp.2d 332, 344 (S.D.N.Y. 2009), the court concluded that an implied non-exclusive license would exist “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 noted that the undisputed facts supported a reasonable inference that the tattoo artists 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.

Lastly, the court determined Take-Two was entitled to judgment as a matter of law on its counterclaim because the uncontroverted evidence demonstrated that all four fair use factors weighed in favor of Take-Two and its use of the tattoos constituted fair use. Take-Two’s originality argument was considered by the court when reviewing the nature of the copyrighted work factor instead of invalidating Solid Oak’s copyright.

What’s Next?

The Southern District’s ruling could have an impact on similar cases involving the reproduction of tattoos. IP practitioners can take note of the court’s findings not only with litigation concerning tattoos but also when drafting licenses and right of publicity agreements involving tattoos and clearing rights for creative projects.

About the author: Jill Ormond is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on litigation and transactional matters related to the entertainment industry, including film, animation, gaming, music, live performance and literary. Ms. Ormond’s biography can be found here.