From a commercial standpoint, the representation and exploitation of an athlete's image and likeness is of utmost importance both in traditional sports as well as their video game virtualizations. Within this context, one of the most complex issues at stake is the intersection between image rights, in which issues of privacy and publicity play a fundamental role, and freedom of speech.
As gaming and esports become more and more popular worldwide, intriguing questions are being raised: Who is the "owner", from a copyright perspective, of the recreation of an athlete's tattoo in a video game? The tattoo artist who designed the work? The athlete in whose skin the tattoo has been inked? The company that created, developed and marketed the relevant video game?
On March 26, 2020, the United States District Court for the Southern District of New York ("SDNY") addressed these issues of tattoo copyright ownership by rendering a judgment in Solid Oak Sketches, LLC v. 2K Games, Inc. and Take-Two Interactive Software, Inc.
In a nutshell, in granting summary judgment in favor of the defendants, the district court in New York ruled that their depiction of several NBA players' tattoos in one of their video games, NBA 2K, was de minimis (i.e. extremely small), and that they obtained an implied license. Moreover, the court ruled that a video game's use of players' licensed likenesses, which might include their tattoos, would be "fair use" under U.S. copyright law.
First released in 1999, NBA 2K is a series of basketball sports simulation video games developed and marketed annually since 2005 by major video game publisher Take-Two Interactive Software, Inc. ("Take-Two") through their California-based subsidiary 2K.
NBA 2K is one of the most successful video games ever published, with almost 90 million copies sold as of December 2018. It depicts basketball with realistic reproductions of the physical features of various National Basketball Association ("NBA") players, including their tattoos.
Clearly, at issue here is not Take-Two's right to use the relevant NBA players' name, image and likeness per se. All these features are part of a major license agreement that Take-Two entered into with the NBA in 2019 for the purpose of being granted, in consideration for about USD 1.1 billion, the right to use all the NBA's properties that characterize their popular videogame.
Since 2016, tattoo company Solid Oak Sketches, LLC ("Solid Oak") has claimed that Take-Two has infringed its copyrights by publicly displaying specific works of art in relation to which Solid Oak owns the relevant copyrights. The works of art at stake are five tattoos depicted on NBA players Eric Bledsoe, LeBron James and Kenyon Martin in versions 2K14, 2K15 and 2K16 of Take-Two's video game. Solid Oak acquired the rights to the tattoos directly from several tattoo artists.
In rendering its decision in favor of the video game developers, consideration was given by the SDNY to the following elements of NBA 2K:
- the tattoos reproduced in the defendants' video game are shown solely on the players on which they are inked, and thus only three out of over 400 NBA athletes;
- the three players' tattoos are out of focus and they can only be seen as "undefined dark shading" on the arms of the players; and
- the tattoos' display is "small and indistinct", making them appear as visual features that move rapidly along with groups of player figures.
In granting summary judgment in favor of Take-Two, U.S. District Court Judge Laura Taylor Swain found:
- there was no "substantial similarity" and the degree of defendant's copying of the tattoos was de minimis;
- Take-Two had obtained an implied license, on a non-exclusive basis, to reproduce and exploit the players' tattoos in its NBA 2K video games; and
- In creating the copies of the NBA players' tattoos, Take-Two's actions constituted "fair use", under U.S. copyright law, in light of their "transformative nature".
De minimis use
Well settled case law in the U.S. supports that, in order to successfully establish a copyright infringement claim, the plaintiff (i.e. the owner of a valid copyright) must demonstrate two elements to the court: (1) that "the defendant had actually copied the plaintiff’s work"; and (2) that "the copying was illegal because a substantial similarity existed between the defendant’s work and the protectable elements of plaintiff's". Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 63 (2d Cir. 2010).
Moreover, as pointed out by the SDNY in this case – citing Castle Rock Entm’t, Inc. v. Carol Publ’g Grp, Inc., 150 F.3d 132, 138 (2d Cir. 1998) – "to be substantially similar, the amount of copyrighted work copied must be more than de minimis".
In issuing its ruling, the SDNY underlined that no reasonable jury could reach the conclusion that Solid Oak had met its burden of proving that Take-Two's use of the copyrighted material was substantially similar to Solid Oak’s copyrighted work. In fact Judge Swain noted that the tattoos were "significantly reduced in size", being just 4.4% to 10.96% of the actual real life size.
Therefore, in the eyes of the court, the defendant's copying was not substantial but, instead, was deemed a mere de minimis.
In addition, the federal court in New York found that Take-Two obtained an implied license, on a non-exclusive basis, to reproduce and exploit the players' tattoos when developing their NBA 2K series of video games. An implied license is a non-written license which grants permission to someone to do or carry out something that would otherwise necessitate the express (i.e. written) permission of the grantor.
Usually, individuals sporting a tattoo are deemed to have obtained some sort of implied license from their tattooists. Such a license would permit the person on whom the tattoo has been inked to exhibit the tattoo in public (as any other works of art), as well as to exploit the copyrights stemming from such tattoo in pictures or videos.
In carrying out her analysis, the district court judge recognized that the Second Circuit Court of Appeals had not yet rendered a clear ruling on what can be deemed an "implied license" and how such a waiver would qualify. Nevertheless, the Second Circuit had previously found that an implied non-exclusive license could be granted "where one party created a work at the other’s request and handed it over, intending that the other copy and distribute it". Weinstein Co. v. Smokewood Entm’t Grp., LLC, 664 F. Supp. 2d 332, 344 (S.D.N.Y. 2009).
In this case, the SDNY judge analyzed the evidence provided by the parties and found that the tattooists granted the players with a non-exclusive implied license on the basis that the athletes, as internationally-renowned sports talents, had the intent to make the tattoos an intrinsic part of their public life.
As per Judge Swain's decision, "(i) the Players each requested the creation of the Tattoos, (ii) the tattooists created the Tattoos and delivered them to the Players by inking the designs onto their skin, and (iii) the tattooists intended the Players to copy and distribute the Tattoos as elements of their likenesses, each knowing that the Players were likely to appear in public, on television, in commercials, or in other forms of media".
Thus, as noted by the SDNY, these implied licenses would include the exploitation of the athletes' images and likeness, including their tattoos, for marketing and sponsorship: "Defendants had permission to include the Tattoos on the Players’ bodies in NBA 2K because the Players had an implied license to use the Tattoos as part of their likeness, and the Players either directly or indirectly [through the NBA] granted Defendants a license to use their likenesses. Defendants are therefore entitled as a matter of law to summary judgment dismissing Plaintiff’s copyright infringement claim for this reason as well".
Finally, the SDNY analyzed this case under the so-called "fair use" doctrine, which creates an exception to the shield of copyright protection when the reproduction of someone's work is carried out, for a limited and "transformative" purposes, for reasons of criticism, comment, news reporting, teaching, scholarship, or research. 17 U.S.C. §107.
When courts address fair use, they take into considerations several factors, in accordance with the Copyright Act, such as the purpose and character of the use, as well as the nature of the copyrighted work. Under U.S. copyright law, one essential question in applying the fair use doctrine is whether the alleged infringer's use of the copyrighted work was "transformative" (i.e. that the new work has significantly changed the appearance or nature of the original copyrighted work).
A court's "transformative use" analysis would include "(i) whether the two works have different purposes, (ii) the size of the reproductions, (iii) whether the expressive value of the reproduced material is minimized, and (iv) the proportion of copied material". Moreover, "courts would also take into consideration whether the allegedly infringing use was commercial in nature". Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994).
Here, the SDNY found that "undisputed evidence" demonstrated that Take-Two's use of the tattoos was transformative, thus ruling that their reproduction of the tattoos in the video games was protected by the fair use doctrine.
As noted by Judge Swain, "while NBA 2K features exact copies of the Tattoo designs, its purpose in displaying the Tattoos is entirely different from the purpose for which the Tattoos were originally created".
The judgment rendered by the SDNY in Solid Oak Sketches, LLC v. 2K Games, Inc. and Take-Two Interactive Software, Inc. resolved important issues of copyright ownership in tattoos, which have been debated for years.
Although this ruling has been issued by a district court judge – and thus it does not carry as much precedential weight as a judgment of a court of appeals would – its persuasiveness may have an influence on similar cases.
For instance, Take-Two is currently involved in a lawsuit with Visual Concepts over the reproduction of tattoos in another of their products, WWE 2K (a series of professional simulation video games revolving around wrestling sports). On March 18, 2020 – i.e., a few days before the SDNY ruling in Solid Oak – a federal judge in Illinois refused to dismiss the Visual Concepts case on procedural and jurisdictional grounds. The matter will most likely go forward, with Solid Oak now providing a good precedent in favor of Take-Two.
The wrestle over tattoos is set to continue.