By Robert Freeman, Jonathan Mollod, and Ted Tywang, of Proskauer
Sports and Hollywood have long been inextricably linked — many athletes want to be and even become actors, countless actors have lived out their athletic fantasies on the silver screen, and it is no secret that athletes and actresses are often quite publicly attracted to each other. Recently, another area of overlap between sports and movies has emerged: the fringes of copyright law.
Both movies and sports have given rise in recent years to disputes over the copyright ownership of and accompanying reproduction and display rights to tattoos on high-profile celebrities. In 2005, a tattoo artist who inked colorful basketball player Rasheed Wallace sued Wallace, Nike and the ad agency responsible for a commercial prominently featuring Wallace’s body art. In 2011, we wrote about the then-pending case in which the artist who created Mike Tyson’s infamous face tattoo brought a copyright infringement claim against Warner Brothers for featuring a similar tattoo in the movie The Hangover Part II. Earlier this year, EA Sports was needled by a copyright infringement claim by a tattoo artist based on a nine-year-old video game cover with a larger-than-life illustration of former NFL star Ricky Williams and the art on his bicep. Litigation is currently round-kicking its way through the courts in a similar case brought by a tattoo artist against the maker of a Mixed Martial Arts video game. The Ricky Williams case was dismissed at the request of the plaintiff, and both the Wallace case and the Hangover case subsequently settled for undisclosed amounts, but clearly this issue is not going away anytime soon.
We are unaware of any courts definitively ruling on the copyright status of tattoos, as the parties to such suits thus far have found early settlement to be the preferred solution. However, in her ruling rejecting the tattoo artist’s request for a preliminary injunction to bar the release of The Hangover Part II, Judge Catherine Perry did indicate that the artist would likely succeed on the merits of his copyright infringement claim (Whitmill vs. Warner Bros. Entertainment Inc., No. 11-cv-00752 (E.D. Mo. May 24, 2011)). Judge Perry forcefully rejected Warner Brothers’ claim that the tattoo was not copyrightable, and also rejected the media giant’s fair use and parody defenses.
Commentators agree with Judge Perry’s position on the issue, as the broad protection afforded artists under copyright law covers “original works of authorship fixed in any tangible medium of expression” (emphasis added) and includes pictorial and graphic works. Presumably, even minimally original tattoos meet this threshold. Any subsequent dispute would likely turn on whether the author of the copyrighted content (here, the tattoo artist) retains the rights in the tat, or whether a written agreement establishes a work-made-for-hire or other assignment of rights, and whether the defendant can establish a successful fair use defense. To be sure, most disputes have not centered on the tattoo subject’s own display of his tattooed skin, but rather on a third party’s use of the inked athlete’s image in a public medium such as a video game, movie, or other advertisement.
The Ricky Williams / EA Sports case recently attracted the attention of the NFL Players’ Association, which has begun advising players to protect themselves (and potential advertising partners) by obtaining a waiver or license in advance from tattoo artists. This is sound advice, but in light of recent litigation which has brought light (and ink) to the issue, such licenses may not come cheaply, as some tattoo artists are likely telling their wealthy athlete clientele “show me the money.” One artist even envisions a six-figure payday for each copyright license assigned to an athlete sporting his ink — good work if you can get it! Depending on the level of celebrity, some artists may instead be content with the free advertising and exposure that comes with being a tattoo artist to the stars.
Artists aren’t the only ones seeing a potential goldmine in athlete ink IP. Forbes recently detailed the story of Matt Siegler, a businessman planning to cash in on his collection of exclusive copyright licenses from tattoo artists serving high-profile NBA players (including Lebron James, arguably the most famous athlete in the world). Siegler plans to exploit the designs of the licensed tattoos for apparel and other merchandise, and also stands to profit if the NFLPA’s fear of copyright infringement liability influences licensing negotiations with commercial advertisers and video game creators. It is unclear whether Siegler’s venture has yielded positive results, but it is possible that his tattoo copyright licenses will turn out to be a golden ticket.
So where is all this headed? In a recent op-ed, two law professors argue that IP rights in tattoos should be viewed as an implied license under which the tattooed athlete obtains reasonable rights regarding the public display and commercialization of the tat based upon the expectations and actions of the parties. This is especially true in the case of famous athletes, the professors maintain, where everyone (including the tattoo artist himself) knows and expects that the tattoo will be highly visible in the public eye. However, the theory of implied license is highly fact-based, and the outcome of any dispute would depend on the understanding between the artist and the athlete. Put simply, the ink is certainly not dry on this legal issue and the empowerment of tattoo artists seems to be growing. It remains to be seen what will be more valuable over the next few years: Colin Kaepernick’s cannon of an arm or the lavish tattoos adorning that weapon.
