Noah Vollmer- In the United States, tattoo artists’ designs are protected under copyright law. This gives artists the exclusive right to make and distribute copies of their designs and allows them to be compensated when someone else wishes to reproduce their designs. However, a problem can arise when a company wishes to use an artist’s copyrighted design when creating a video game version of the person on whom the design appears. Is the tattoo protectable by the artist’s copyright? Or is it part of the person’s likeness and thus able to be licensed by him or her? Two district court rulings this year took conflicting stances on the issue, setting up a potential circuit split and failing to provide any guidance to the expanding video game industry and to athletes and celebrities everywhere.
Solid Oak Sketches, LLC. v. Take-Two Interactive Software, Inc.
In 2016, Solid Oak Sketches, LLC sued Take-Two Interactive Software and alleged copyright infringement on five tattoo designs appearing on NBA players LeBron James, Eric Bledsoe, and Kenyon Martin. Solid Oak had copyrighted designs and argued that its rights were infringed upon when Take-Two, the makers of the popular annually released NBA 2K video game, displayed these tattoos on the aforementioned players in multiple versions of the game. Take-Two countered that the individual players have the rights to their likenesses, which include the tattoos on their body, and that they lawfully licensed their likenesses to the NBA who in turn licensed them to Take-Two.
In March 2020, a New York district court granted Take-Two’s Motion for Summary Judgment and found it had successfully argued that the use of the tattoos was de minimis and also that it had an implied license from the artists to recreate the tattoos in question.
De Minimis Use
Take-Two successfully argued that its use of the tattoos was de minimis, meaning that it was so small and insignificant that no copyright infringement occurred. The designs only appeared on three out of more than 400 players in the game, so the average game played in NBA 2K was unlikely to include the tattoos. Further, the tattoos were too small and indistinct to be to be substantially similar to the copyrighted designs. In the game, the tattoos appeared on screen between 4.4% and 10.96% of their real-life size. Additionally, the quick and erratic movements involved in the gameplay made it so that the tattoos were unidentifiable and only looked like dark shading on the players’ arms.
Further, the district court held that Take-Two had an implied license to feature the tattoos as part of the players’ likenesses. The district court acknowledged that courts within the Second Circuit have recognized an implied license defense when a party creates a work at the request of another and gives it to the requestor with the intention that he or she will copy and distribute it. The three tattoo artists who created the tattoos at issue in this case all stated that they intended for the players to copy and distribute the tattoos as part of their likenesses. They also stated they were aware the players were likely to appear with the copyrighted designs in some form of media, including video games. Therefore, because there was no agreement between the players and the artists to limit the depiction of their tattoos, the players had the right to license their tattoos to the NBA as part of their likenesses, and the NBA had the right to license the same to Take-Two.
Alexander v. Take-Two Interactive Software, Inc.
In 2018, tattoo artist Catherine Alexander sued Take-Two for copyright infringement for using her copyrighted designs tattooed on WWE superstar Randy Orton in their video game WWE 2K. Similar to the NBA players in Solid Oak, Take-Two argued that Orton lawfully licensed his likeness, including his tattoos, to WWE who then licensed it to Take-Two. Take-Two again argued that its use of the tattoos was de minimis and that it had an implied license to use them. This time, however, an Illinois district court judge was unpersuaded by their arguments and denied their Motion for Summary Judgment in September.
De Minimis Use
Take-Two argued that its use of Alexander’s designs was de minimis because Orton was one of many wrestlers available to play with in WWE 2K and that his tattoos were difficult to see while playing the game. The court noted the defense had been successfully used within the Seventh Circuit when the copying involved a small and insignificant portion of a work but never applied it to a copyright infringement claim. Because Take-Two copied the tattoo in its entirety, Take-Two’s use of the tattoo was not de minimis, and summary judgment was denied.
Similar to Solid Oak, Take-Two argued that it had an implied license to use Orton’s tattoos in its video games because Alexander created the tattoos at Orton’s request and never informed him that licensing his tattoos as part of his likeness would constitute infringement. Alexander countered that she had never allowed a client to use copies of her work in video games and that Orton’s right to license his likeness did not amount to a right to use her copyrighted work. The court denied summary judgment because it was unclear whether Alexander and Orton had ever discussed copying the tattoos, meaning there was a genuine dispute of material fact.
As video game consoles continue to improve and the graphics in the games become more life-like, more and more video game developers will run into copyright infringement claims when trying to create digital versions of athletes and celebrities that are as realistic as possible. Further, with the recent push to expand the name, image, and likeness rights of collegiate athletes, it is entirely foreseeable that numerous legal battles will arise between those wishing to use the likenesses of tattooed athletes and the artists who created their tattoos. Because of the uncertainty and the massive implications that a resolution could have on both the video game industry and collegiate sports, this is potentially an area where the Supreme Court could decide to intervene.