Hannah M. Marek, of Skadden, Arps, Slate, Meagher & Flom LLP
(The following will appear in the upcoming issue of Esports and the Law – https://esportsandthelaw.com/)
On March 26, 2020, the U.S. District Court for the Southern District of New York drew clear limits on the scope of copyright protection available for tattoos inked on public figures. In Solid Oak Sketches, LLC v. 2K Games, Inc, Judge Laura Swain dismissed tattoo art licensee Solid Oak’s copyright infringement lawsuit against video game publisher Take Two Interactive, finding that Take Two’s use of images of certain NBA stars’ copyrighted tattoos in its basketball simulation video games, published by Take Two’s 2K Games studio, was de minimis, authorized by implied license, and fair use.
Take Two’s NBA 2K video game franchise features realistic renderings of NBA basketball games, with lifelike depictions of the players, including their tattoos. Solid Oak, the exclusive licensee to certain tattoos inked on three NBA players, sued Take Two for infringing its copyrights in those tattoos. Take Two moved for summary judgment dismissing Solid Oak’s copyright claim and entering a declaratory judgment in Take Two’s favor. The court granted Take Two’s motion, finding a lack of infringement based on several grounds.
First, the court held that Take Two’s use of the tattoos was de minimis, precluding a finding of substantial similarity between the video game and the copyrighted work. The tattoos appeared only on the players upon whom they are actually inked—just three out of over 400 available players. Even when such players are selected in the game, the tattoos are small and indistinct, often blurred as the figures move rapidly across the virtual court. The video game renderings of the tattoos were also greatly reduced, ranging from 4.4% to 10.96% of the size of the tattoos in real life.
Second, the court found that Take Two was authorized to display the tattoos under an implied license. In doing so, the court found that (i) each of the three players with the tattoos at issue requested the creation of those tattoos; (ii) the tattoo artists accordingly created the tattoos and delivered them to the players by inking them onto their skin; and (iii) the tattooists intended the players to copy and distribute the tattoos as part of their likeness, knowing that the players were public figures likely to appear in the public in various forms of media.
Third, the court agreed that Take Two’s use of the tattoo images constituted fair use. Despite the game’s commercial nature, the court found that the purpose and character of Take Two’s use was transformative and therefore weighed in favor of fair use. Each of the tattoos has a meaning personal to the players, and was created for the players to express themselves. Take Two, by contrast, used the tattoos to identify the video game figures as the players.
Analyzing the remaining fair use factors, the court found that the tattoos were not particularly creative or expressive because they comprised predominantly common motifs and factual elements, weighing against fair use. Although the tattoos were copied in their entirety, the court found that this did not weigh against fair use because such whole sale copying was necessary “to effectuate the transformative purpose of creating a realistic game experience.” Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-cv-00724-LTS-SDA, at 21 (S.D.N.Y. filed Mar. 26, 2020).Finally, due to the transformativeness of the work, Take Two’s use did not serve as a substitute for the actual tattoos. Nor did the court find evidence of a market for licensing tattoos for use in video games, let alone one that was impaired by the game’s use of the tattoos.
This decision has substantial implications for the scope of possible copyright protection for “identifying” works of art as used in video games, even beyond tattoos on athletes. Indeed, as games continue to become more realistic, and as the line between the virtual and real world blurs with the rise of augmented and virtual reality games, it is likely that more real world works of art will begin to appear in video games. The court’s fair use analysis, and in particular its transformative use discussion, suggests that when such works are replicated in a game to identify a person or locality, the copyright owner may face challenges in establishing infringement. Further, the suggestion that an implied license may be found where an artist working on commission knew (or potentially should have known) that their art may be publicly reproduced could limit the scope of protection for such “public” works.
