Slowly Resolving the Uncertainty Surrounding Tattoos and Copyright Law: Solid Oak Sketches V. 2k Games and Take-Two

The dearth of clear case law on the enforceability of tattoo copyrights has left not only the legal profession, but those in the entertainment industry, wanting for answers: how might the tattoos that famous figures (such as athletes) get to impact their ability to do their job or monetize themselves, and how do they avoid these problems any time they wish to get a new tattoo? Which tattoos can film studios or video game companies make visible in their products, and how can these reproductions be manipulated to avoid infringement? What options are available to tattoo artists to protect their designs?

While many of these questions remain unanswered, the Southern District of New York has recently provided the first authoritative court decision on the interplay between tattoos and copyrights, in Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-CV-724-LTS-SDA, 2020 WL 1467394 (S.D.N.Y. Mar. 26, 2020).

Background

In the case, 2K Games, Inc. and Take-Two Interactive Software, Inc.—the companies responsible for the development, creation, and marketing of the NBA 2K video game series — were sued for copyright infringement by Solid Oaks, LLC — an entity that had entered into exclusive license agreements with the tattoo artists who inked up certain NBA players. At issue was Defendants’ depiction in the NBA 2K games of five tattoos appearing on three different NBA players, three of those tattoos on the body of LeBron James. As with all the players appearing in the NBA 2K games, the virtual avatars of those three players were created by Defendants using full-body scans, photographing them at every angle in an effort to accurately represent them.

In August 2018, Defendants’ moved for summary judgment seeking dismissal of Solid Oak’s copyright infringement claim in its entirety. Their motion was based on multiple alternative arguments. First, Defendants argued that the use of the tattoos—which purportedly accounted for .000286-000431% of each game’s total data package—was a de minimis use, and therefore not actionable. Defendants’ video game expert provided evidence of the same, stating that the tattoos were a “fractional, fleeting part of NBA 2K.” Their argument also reasoned that: (i) the tattoos only appeared on three of the 400+ players available in the game, and (ii) those that play the NBA 2K games don’t even see the tattoos clearly during gameplay for a variety of reasons, including because of their small depiction on a T.V. screen and because the players on whom the tattoos appear move quickly and erratically in the games.

Second, Defendants argued that each of the four fair use factors weighed in favor of a finding of fair use. As to the first factor (purpose and character of the use), Defendants argued the use was transformative, given their purpose of using the tattoos in the game was nothing more than to create a realistic game. As to the second factor (nature of the work), Defendants argued that the tattoos were based on preexisting works and therefore lacked creativity, and that the tattoos had already been published prior to their inclusion in the game. As to the third factor (amount and substantiality), Defendants argued that the tattoos in the game were much smaller than in real life. And as to the fourth factor (effect on the potential market), Defendants argued there is no reasonable, traditional, or likely to be developed market for licensing the rights to use tattoos in a video game — indeed, Solid Oak never introduced evidence of any prior license in which a tattoo image was licensed in a video game, let alone where, like here, the person bearing the tattoo had already provided consent to reproduce his likeness.

In that realm, the Defendants’ third argument was that their use was authorized by implied license. The chain of authorization started with the players and tattooists, and their expectations that the tattoos would be part of the players’ respective bodies, images, likenesses, and identities — creating an implied license granted to the players. In support of this, Defendants submitted declarations from both the players and the tattooists that showed that it was understood that when the tattoos were inked on the players’ bodies, the players had the right to display and recreate those tattoos as part of their likenesses. The players, having that implied license, then gave the NBA the right to license their likenesses to third parties, and the Defendants obtained permission from the NBA and the players to use those respective likenesses in NBA 2K.[2]

The Court’s Decision

In granting Defendants’ motion and dismissing Solid Oak’s copyright infringement claim, the Court’s reasoned opinion provided some long-awaited guidance on these issues. First, the Court found that Defendants’ use was de minimis, as “no reasonable trier of fact could find the tattoos as they appear in NBA 2K to be substantially similar” to the tattoo designs Solid Oak had obtained licenses to.[3] The Court referenced repeatedly the evidence Defendants had introduced to show that the players bearing the tattoos were unlikely to be included in “average gameplay,” and that even when they did, the tattoos were small, not distinctly displayed, and indiscernible to the average user.[4] Finally, the Court explicitly acknowledged Solid Oak’s failure to submit any evidence to support its assertion that NBA 2K “employ[ed] the broad range of the video game’s features to focus, angle the camera on, or make the subject tattoos more prominent.”[5] As such, the record showed only that Defendants’ use of the tattoos in NBA 2K did not meet the quantitative threshold of substantial similarity, and was, therefore, de minimis use and not actionable infringement.

Next, the Court found that Solid Oak also could not prevail on its infringement claim because Defendants’ use the tattoos in NBA 2K was authorized. Acknowledging the lack of precedent in the Second Circuit delineating the precise circumstances that form an implied license, the Court noted that other courts had found implied non-exclusive licenses were formed “where one party created a work at the other’s request and handed it over, intending that the other copy and distribute it.”[6] Here, then, the evidence established that the tattooists had granted the NBA players an implied license to use the tattoos as part of their likenesses, and those implied licenses were formed before Solid Oaks had been granted its own licenses in the tattoos. And because Defendants had obtained licenses to use the players’ likenesses in NBA 2K (both directly from the players and indirectly from the NBA), Defendants had permission to include the tattoos on the players as part of their likenesses.

Lastly, the Court found Defendants’ fair use argument was persuasive. As to the first factor, the court found Defendants’ use to be transformative—the purpose in displaying the tattoos in NBA 2K was “entirely different” from the purpose for which the tattoos were originally created, a means for the players to “express themselves through body art.”[7] Rather, Defendants’ use of the tattoos was to accurately represent the players in their game. This, coupled with the reduced size of the tattoos in NBA 2K, the minimal expressive value of the tattoos in NBA 2K, and that the tattoos were only an “inconsequential portion” of NBA 2K all weighed in favor of finding the use was transformative.[8]

The second fair use factor was also in Defendants’ favor, though this determination required the Court’s analysis of each of the five tattoos, leading to its finding that they were each “more factual than expressive because they are each based on another factual work or comprise representational renderings of common objects and motifs that are frequently found in tattoos.”[9] For example, one of LeBron James’ tattoos was copied from a photograph of his son, and another was simply the addition of flames to numbers he already had inked on his skin. The Court found the third fair use factor was neutral, as Defendants’ use of the entirety of the tattoos was done solely and necessarily to accomplish the transformative purpose of creating an accurate video game. And fourth, having already found the use was transformative, the Court found that Defendants’ use could not deprive Solid Oak of significant revenues, further finding there was no evidence to support the notion that a market for licensing tattoos in video games is likely to develop. Even if it did, the Court noted that Solid Oak would not be able to profit on from such a market, because it had not also obtained the requisite rights to the players’ likenesses.[10]

Is Any Uncertainty Actually Resolved?

The Solid Oak Sketches court never did explicitly say, one way or the other, whether a tattoo artist can accurately claim to own a copyright in a design he etched onto the body of another person, and its ruling is intimately driven by facts specific to the case. However, while the opinion may not be the definitive guidance some have longed for, it does provide some very helpful insight as to circumstances that will heavily influence the determination of whether the use of a tattoo constitutes infringement, including: (i) the origins of the tattoos at issue; (ii) the nature of the relationship between the tattoo artists and their clients; and (iii) the medium and manner in which the allegedly infringing copies of the tattoos appear. Indeed, Defendants are currently defending a similar lawsuit for their depiction of wrestler Randy Orton’s tribal, dove, rose, and skull tattoos in WWE 2K games.[11] Trial, in that case, is set for September 2020, but with summary judgment motions for both sides currently pending, the Solid Oak Sketches court’s reasoning may very well serve as the first source of inspiration.

[1] Whitmill v. Warner Bros. Entm’t., No. 4:11-CV-00752 (E.D. Mo., filed 4/28/2011) (ECF No. 46). The case subsequently settled.

[2] Defendants’ fourth argument was that Solid Oak could not meet the originality requirement mandated for copyright protection, in that Solid Oak had no knowledge of the tattoos’ creations, and that the tattoos were based on pre-existing works, making them unoriginal. The Court didn’t address this argument in its opinion.

[3] Solid Oak Sketches, 2020 WL 1467394, at *6.

[4] Id. at *6-7.

[5] Id. at *7 (quoting the Court’s earlier denial of Defendants’ motion for judgment on the pleadings (ECF No. 117, March 30, 2018)).

[6] Id. (quoting Weinstein Co. v. Smokewood Entm’t Grp., LLC, 664 F. Supp. 2d 332, 344 (S.D.N.Y. 2009)).

[7] Id. at *8.

[8] Id. at *9.

[9] Id. at *9.

[10] Id. at *11.

[11] Alexander v. Take-Two Interactive Software, Inc. et al., No. 3:18-cv-00966 (S.D. Ill., filed 4/17/2018). Defendants just recently filed a Notice of Supplemental Authority, citing the Solid Oak Sketches decision.