Who Owns the Ink?

By on April 30, 2020
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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.

Filed under Copyright, Copyright Claims, Copyright Infringement, Copyright Owners

Supreme Court: Copyright Owners Must Register with U.S. Copyright Office Before Filing Suit

By on March 9, 2019

Author: Joni Flaherty

In a unanimous decision authored by Justice Ginsburg, the Supreme Court has held that copyright owners must register with the U.S. Copyright Office before commencing a lawsuit to enforce their rights. In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ___ (2019), the Supreme Court found that the Copyright Act of 1976 requires that the Copyright Office issue a certificate of registration, and that application for the certificate was not enough prior to commencing suit. The decision resolves a split among circuit courts, favoring the “registration approach” followed by the Tenth and Eleventh Circuits, under which registration by the Copyright Office was required to proceed, and rejecting the “application approach” followed by the Fifth and Ninth Circuit courts. The result turned on the interpretation of the phrase “registration of the copyright claim has been made” in Section 411(a) of the Copyright Act. That section reads:

[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim.

Fourth Estate, a public benefit online news producer, licensed articles to Wall-Street.com, a news website. When the license expired and Wall-Street.com failed to remove the articles from its website, Fourth Estate brought a trademark infringement claim. Wall-Street moved to dismiss the claims on the grounds that Fourth Estate had applied for, but had not yet registered, copyrights in its articles. Interpreting Section 411(a) of the Copyright Act, the District Court for the Southern District of Florida granted Wall-Street’s motion to dismiss, and that decision was affirmed by the Court of Appeals for the Eleventh Circuit.

The Supreme Court affirmed, citing the practical implications of litigating prior to the Copyright Office’s grant or denial of registration. The Court found that Fourth Estate’s concerns about depriving copyright owners of the ability to timely enforce their rights was “overstated,” and given that the average registration process takes several months (seven months, on average), there was little danger that a diligent copyright owner would be barred by the three-year statute of limitations. The Court also acknowledged exceptions to the rule, and the opportunity for copyright owners to pay an additional fee to rush their copyright application.

As a practical matter, the decision may encourage some copyright owners to promptly register their creative works. The decision may also cause a delay in some infringement suits or lead to more early dismissals of claims, and may also prevent eager litigants from adding a peripheral infringement claim for an applied-for but not yet registered copyright to a complaint.

About the author: Joni Flaherty is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property and Commercial Litigation Practice Groups. Her practice focuses on intellectual property and business litigation, with an emphasis on unfair business practices, trademark claims, and contractual disputes. Ms. Flaherty’s biography can be found here.

Filed under Copyright, Copyright Infringement, Copyright Owners

DMCA Safe Harbor and Takedown Notice Checklists

By on September 23, 2014
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The Digital Millennium Copyright Act (DMCA) offers protection against liability for website owners from third-party content. Copyright owners can also demand removal of their copyrighted works by following the rules provided by the DMCA.

Below are some checklists for website owners as well as copyright owners.

Website Owners: Do You Need Protection from the DMCA Safe Harbor Provisions?

Should you set up DMCA notification policies? If the answer to any of the following questions is “yes,” you likely want to ensure that the DMCA safe harbor provisions will protect you.

  • Is your site reliant on or otherwise focused on user-provided content?
  • Are users likely to post infringing materials in the comments section, discussion boards, or forums?
  • Do you link to other sites that could be posting infringing material without your knowledge?

Keep in mind that there may be other less-typical circumstances where you would also want to consider DMCA safe harbor protection — the key is whether your site will feature a lot of third-party content that may be infringing.

Website Owners: Protecting Yourself Under the DMCA Safe Harbor Provisions

Once you have decided that you will likely need protection under the DMCA safe harbor provisions, below are the conditions you must satisfy.

  • If you have the right and ability to control the infringing activity, you must not receive a financial benefit directly attributable to that activity.
“Right and ability to control” has been interpreted by many courts to mean something more than just the ability to locate infringing material and terminate users’ access. It has been found where:

  • a site owner organized torrent files with specific search terms describing material likely to be infringing (e.g., “screener,” “PPV”), personally assisted users in locating infringing files, or personally screened files to remove fake, infected, or bad torrents; and
  • a service provider gave participating websites detailed instructions regarding issues of layout, appearance, and content, refused access to its system until the sites comply with its requirements, or monitored images to ensure that the sites did not primarily consist of celebrity images;

“Right and ability to control” has not been found where:

  • the site owner could have implemented and did implement automatic filtering systems and could have merely searched for potentially infringing content.

“Financial benefit” can include advertising revenue.
  • You must not have actual knowledge that the material is infringing.
Generally, knowledge is not imputed on the website owner simply due to the material’s existence on the website.
  • Upon learning that the material is infringing, you must expeditiously remove such material.
What constitutes “expeditious” has not been further explained in the statutes, and likely depends on the circumstances. Courts have generally found that removing infringing materials within a few days is “expeditious”; for DMCA notices identifying 170 videos, 3.5 weeks has been considered “expeditious.” A processing time of four to 17 months, on the other hand, may not be “expeditious” — the court left the issue up to a jury to decide.
  • You must designate an agent to receive DMCA notifications; this agent’s name, address, phone number, and email must be on file with the U.S. Copyright Office and available on your own site.
Make sure to:

  • keep this information updated and current;
  • have someone regularly check correspondences, preferably daily;
  • for email, double-check your spam filters; and
  • for online forms, double-check that these work.

If the forms are forwarded to an email address, double-check spam filters. Certain email providers will flag online form emails as a “spoofed” email.

If you need to provide certain instructions to the copyright holder (e.g., how to provide a link to a comment or bulletin board post that will be specific enough for you to identify the infringing material), make that information available as well.
  • You must have adopted and reasonably implemented, as well as informed users, a policy that terminates the accounts for repeat infringers in appropriate circumstances.
The statute does not define “appropriate circumstances.” The key here is to craft a reasonable policy, adhere to that policy, and inform users of that policy.In the Ninth Circuit, the website/service owner must also not actively prevent copyright owners from collecting information necessary to issue DMCA notifications. For example, a peer-to-peer file-sharing network that encrypted data as to which user was sharing which files was found not to have a reasonably implemented repeat infringer policy.
  • You and your site must accommodate and not interfere with standard technical measures.
The statute defines “standard technical measures” as “technical measures that are used by copyright owners to identify or protect copyrighted works” and

  • “have been developed pursuant to a broad consensus of copyright owners and service providers in an open, fair, voluntary, multi-industry standards process”;
  • “are available to any person on reasonable and nondiscriminatory terms”; and
  • “do not impose substantial costs on service providers or substantial burdens on their systems or networks.”

Congress attempted to think ahead with this provision, but to date, nothing has qualified as “standard technical measures.”

At least one court has rejected the argument that providing an online image-cropping tool that could potentially crop out copyright watermarks would constitute interference with “standard technical measures.”

Copyright Owners: Issuing DMCA Takedown Notices

Before issuing a DMCA takedown notice, here are some questions to consider:

  • Do you own the copyright? If not, are you authorized by the copyright owner to issue the takedown notice? You must answer “yes” to one of these questions.
  • Keeping in mind fair use, is the material infringing?
Misrepresentations of infringement may make you liable for damages suffered by the other party, including the attorneys’ fees and costs they incurred.Whether a use constitutes fair use can be a complicated issue, but usually the following uses are not considered infringing: criticism, comment, news reporting, teaching, scholarship, research, or parodies.

Have you completely filled out the DMCA notice? If you do not, then the infringing material may not be removed.

    • You must identify the work being infringed upon (e.g., copyright registration number, URLs for the official work, or title/author information).
    • You must identify the infringing material with specificity such that it can be easily located by the host (e.g., URLs of pages or images).
    • You must provide your contact information, including address and telephone number, and email address if available.
    • You must state that you have “a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.”
    • You must also state that “that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.”
    • You must provide a signature, electronic or otherwise.

If the host refuses to act, or if the user issues a counter-notification, would you want to litigate the issue in courts? If so, your copyrighted material may have to be registered with the U.S. Copyright Office.

If there is a counter-notification and you would like to keep the infringing material off the website, you only have 10-14 days to file a lawsuit. Some federal districts require only that you have begun the registration process; others hold that you will need an issued registration at the time of filing the lawsuit. As case law is continually updated, you will have to verify the applicable law before issuing the DMCA takedown notice if litigation is a possibility.

 

Filed under Copyright Owners, DMCA, DMCA safe harbor provisions, DMCA take-down notices, Third-Party Content, Website Owners