By Robert G. Pethick, Esq.
On Friday March 30, 2018, a decision of first impression concerning intellectual property, video games and sports emerged from an unlikely scenario — the reproduction of tattoos in the “NBA 2k” video game franchise.
The decision by United States District Court Judge Laura Swain denied video game maker Take-Two Interactive Software’s motion to dismiss, but allowed tattoo company Solid Oak Sketches, LLC’s claim for copyright infringement to proceed.
The judge’s refusal to declare that the use of tattoos in video games is not de minis or fair use may eventually result in a landmark decision in the realm of copyrights, tattoos and visual media vastly expanding copyright protection.
The lawsuit was brought in February 2016 in the Southern District of New York, captioned Solid Oak Sketches, LLC v. Visual Concepts, LLC et al., Case No. 1:16-cv-0072. The case was brought by Solid Oak Sketches which acquired the rights to various tattoos on several NBA players including generational stars such as Lebron James and Kobe Bryant. In the video game, players’ actual tattoos are digitally rendered on their corresponding avatars. Images that appear in the game include a virtual reproduction of Kobe Bryant’s distinct crown with butterflies tattoo on his right arm and shoulder, amongst other recognizable NBA stars’ tattoos.
Solid Oak Sketches, LLC, the plaintiff in the lawsuit, claims that the depiction of the tattoos on the athletes in NBA 2k16 infringes on its rights as copyright holder. Copyright law specifically protects the original works of expressive medium; however it has yet to be determined if tattoos are copyrightable. Solid Oak noted in its complaint that copyrighted tattoo designs fit directly within the definition of “pictorial, graphic, and sculptural works” and thus are subject to copyright law.
In response, Take-Two argued that the use of the tattoos was de minimis (or, simply put, “not enough”), fleeting and too minor to make any difference. The second argument Take-Two made was “fair use.” The doctrine of fair use permits the unauthorized use of a copyright under limited circumstances. In determining whether fair use is applicable, factors a court will consider are: (1) the purpose and character of the work, such as if it is of commercial nature; (2) the nature of the copyright; (3) the amount and substantiality of the copyright used; and (4) the market effect on the value of the copyright. On these grounds, Take-Two moved to dismiss Solid Oak’s copyright infringement claim.
Ultimately, Judge Swain determined that more information was needed to make a decision on fair use and the prominence of the tattoos in the NBA 2k video game platform, rejecting Take-Two’s motion for dismissal and allowing the lawsuit to proceed.
As mentioned, the issue of tattoo copyrightability has yet to be determined by any judge. Similar lawsuits have been brought but judicial decisions were not rendered. For example, in a widely publicized case, award-winning tattoo artist S. Victor Whitmill sued Warner Bros. over the reproduction of the facial tattoo he inked on Mike Tyson in the blockbuster film Hangover II. A replication of the eminent tribal tattoo inked on Tyson’s face appeared on the face of actor Ed Helms in the film. Warner Bros. and Whitmill eventually settled for an undisclosed amount nearly two years ago. Whtmill, who created the tattoo and registered a copyright, claimed that his work should be afforded the same protections just as any other copyright, no matter whether it be painted on canvases, walls or even tattooed on the body of a former boxing champion. United States District Court Judge, Catherin D. Perry, suggested she saw merit in the case, but ultimately the parties reached a settlement during a lengthy mediation. For this reason, Solid Oak’s claims have the world of interactive and visual media on notice if a decision is rendered.
Although the current action is at the beginning stages, the recent decision suggests that Solid Oak may have a viable claim. The answer as to whether the use of tattoos in video games constitutes copyright infringement may have chilling effects on other forms of media along with video games. Should this matter be decided in favor of the plaintiff, television and movie producers may need to seek licenses or completely avoid using certain tattoos in their work to avoid the threat of copyright infringement.
As the case progresses many interesting issues may be considered including whether the athlete has any rights in the tattoo. As similar claims may surface in the future, the copyrightability of tattoos may ink itself into jurisprudence. How this will ultimately turn out remains questionable, but it certainly is worth following.
Robert Pethick is a New York based attorney for the law firm of Havkins Rosenfeld Ritzert and Varriale located in New York, N.Y. He handles commercial and intellectual property disputes. He can be reached at Robert.pethick@hrrvlaw.com or 646-747-5106
