Imagine a celebrity with a tattoo. Or three. Or five. Due to their celebrity status, their image, along with their tattoos, appears on television, in print, online, in video games, and other media. Who owns the intellectual property rights to the tattoo? The tattoo artist? The celebrity? What if the tattoo artist obtained a copyright registration for the tattoo design?
If you have played any sports video games over the last 20 years, you know that the games are becoming more realistic. This realism includes not only the action, but also greater details of the look and mannerisms of the athletes. These games come so close to reality that sometimes images from the game are confused with actual events. These details also include tattoos on the portrayed athletes.
Over the last two weeks of March 2020, two different district courts issued separate orders relating to video game maker Take-Two regarding whether tattoo artists may claim intellectual property rights to their copyrighted tattoos as displayed on athletes in video games. Both decisions are summarized below.
Alexander v. Take-Two Interactive Software, Inc. - Motion to Dismiss
Plaintiff Catherine Alexander, a tattoo artist, sued multiple defendants, over tattoos she inked onto WWE superstar Randy Orton that are displayed in video games using his image. The defendants include World Wrestling Entertainment (WWE), video game developers (Take-Two Interactive Software, Inc., Visual Concepts Entertainment, Yuke's Co., Ltd. and Yuke's LA Inc.) and video game publishers (2K Games, Inc. and 2K Sports, Inc.) (collectively, "Take-Two").
According to Alexander, she altered a tribal tattoo on Orton's back.
Alexander also allegedly created tribal arm tattoos and tattoos of a bible verse, rose, skull, and dove for Orton.
Left tribal arm tattoos
Bible verse tattoo
According to the complaint, WWE has allegedly featured Orton and his tattoos in various video games since at least 2016. Alexander allegedly reached out to WWE regarding the reproduction of her tattoo designs (via depictions of Orton) on various items sold by WWE. She further alleged that WWE offered $450 for rights to use and reproduce the tattoos on various products, but Alexander refused. Thereafter, Alexander secured copyright registrations for five of the six tattoos (the bible verse tattoo was refused registration). She then sued Take-Two for violations of 17 U.S.C. § 501 for direct, indirect, contributory and/or vicarious infringement of the six tattoos. Take-Two moved to dismiss Alexander's first amended complaint on various grounds, specifically:
(1) Failure to Register the Tattoo Designs. Registration is a prerequisite for filing a copyright infringement claim and Take-Two argued that Alexander did not hold certificates of registration for the tattoos. The Court denied the motion as to the five tattoos Alexander registered, but granted the motion relating to the bible verse tattoo that Alexander failed to register.
(2) Failure to State a Claim. In ruling on Take-Two's FRCP 12 (b)(6) motion for failure to state a claim upon which relief can be granted, the Court found that "[t]o establish copyright infringement, a plaintiff must prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." In denying Take-Two's motion, the Court concluded that Alexander's amended complaint was enough to satisfy FRCP 8 because she alleged registered copyrights in her name, described the infringed tattoos with sufficient particularity, and identified the roles each defendant played in bringing the video games to market.
(3) Lack of Personal Jurisdiction. Yuke's, Yuke's LA, and WWE moved to dismiss for lack of personal jurisdiction. Yuke's is a Japanese corporation and Yuke's LA is a California corporation with a principal place of business in California. The WWE is incorporated in Delaware with its principal place of business in Connecticut.
In analyzing WWE's motion, the Court considered three factors to determine whether it had specific jurisdiction, namely: "(1) intentional conduct (or 'intentional and allegedly tortious' conduct); (2) expressly aimed at the forum state; (3) with the defendant's knowledge that the effects would be felt—that is, the plaintiff would be injured—in the forum state." The Court denied WWE's motion for a variety of reasons, including because WWE promoted 38 live events featuring Orton in Illinois between 2016 and 2018, satisfying the factors.
In contrast, the Court concluded that Alexander failed to establish that Yuke's had "minimum contacts with Illinois", "purposefully availed themselves of the benefits and protections of Illinois law," or "a real relationship" with Illinois. Therefore, the Court granted the Yuke's defendants' motion to dismiss.
Solid Oak Sketches, LLC v. 2K Games, Inc. - Motion for Summary Judgment
Solid Oak Sketches, LLC owns the copyrights to tattoos inked by several different artists. The tattoos at issue were inked on three NBA players: LeBron James, Eric Bledsoe, and Kenyon Martin:
330 and Flames (LeBron James)
Script with Scroll, Clouds, and Doves (LeBron James)
Child Portrait (LeBron James)
Basketball with Stars and Script (Eric Bledsoe)
Basketball Wizard (Kenyon Martin)
Solid Oak filed its litigation against game developer, publisher, and marketer Take-Two Interactive Software, Inc. and its marketing entity 2K Games, Inc. (collectively, "Take-Two") Take-Two develops and sells basketball video games that contain the images of NBA players, including the players mentioned above (the "Video Games"). Solid Oak alleged that Take-Two infringes its copyrights by including images of its tattoo designs on the players in the Video Games
Take-Two filed a motion for summary judgment to dismiss the copyright infringement claims, arguing that the depiction of the tattoos in the Video Games was de minimus and that it had an implied license to depict the tattoos. It also moved for summary judgment on its fair use counterclaim. The Judge granted the motion on all three grounds:
(1) De Minimis Use. In considering whether Take-Two's depiction of the tattoos was de minimis, the Court weighed the fact that the tattoos appear on only three of over 400 available players, concluding that the tattoos do not always appear in regular game play. The Court also confirmed that to the extent a tattoo was displayed during game play, it was so small and indistinct due to the rapidly moving players on the screen that it would not be recognized. Indeed, the videos the Court considered showed that the tattoos appeared out of focus, like an unidentifiable shade on a player's arm. The Court also noted that the images of the tattoos were not featured in marketing materials. The Court therefore held that the use of the tattoos was de minimis, dismissing Solid Oak's complaint.
(2) Implied License. The Court also held that the players had an implied license to use the tattoos as elements of their likeness. In doing so, the Court noted that (1) the players asked for the tattoos, (2) the artists applied the tattoos to the players, and (3) the artists knew the players would distribute the tattoos with their likeness in public and different media. The players thereafter allowed the NBA and Take-Two to use their likeness, including their tattoos, in the Video Games through both direct and indirect licenses. The Court therefore granted Take-Two's summary judgment motion on the basis that it received a license from the relevant players to depict the tattoos.
(3) Fair Use. The Court found that Take-Two's depiction of the tattoos constitutes fair use. To determine whether Take-Two could rely on the fair use defense, the Court evaluated the statutory fair use factors, namely:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
17 U.S.C. §107.
Regarding the purpose and character of the use, the Court concluded that the use of the tattoos in the Video Games was transformative, finding that the use of the tattoos in the Video Games is different from their original purpose (i.e., for the players to express themselves through body art versus to accurately depict the players.). The Court also considered other elements, such as the size of the images (small and unclear), whether the images were used for their expressive value (they are not), and whether their use was commercial (they are not). Indeed, the Court noted that the tattoos made up only "0.000286% to 0.000431% of the total game data." Therefore, the Court concluded that the inclusion of the tattoos in the Video Games satisfied the first factor.
In considering the nature of the copyrighted work, the Court weighed whether the tattoos are expressive or creative and whether they had already been published. Solid Oak conceded that the tattoos were already published. The Court then concluded that the tattoos were not expressive, noting that the tattoos were either based on common objects or motifs (like stars, basketballs, or flames) or from other images, such as the child tattoo (a reproduction of an image of LeBron James's son) and the wizard (that was copied from a pre-existing design). Therefore, the Court determined that the second factor weighed in favor of fair use.
For amount and sustainability, the Court concluded that despite the tattoos being copied in their entirety, it was done for the transformative purpose of replicating real game play. The Court again noted that the size and clarity of the tattoos limited their visual impact. The Court thus held the third factor in favor of fair use.
Finally, the Court determined that the fourth factor, effect on the market, also weighed in favor of Take-Two. The Court held that due to the transformative nature of the tattoos in the Video Games, the Video Games would not be a substitute to the actual tattoos. Stated another way, someone interested in purchasing the copyrighted tattoos would not purchase the Video Games as an alternative. Moreover, the Court agreed that Solid Oak did not have a separate market to license the tattoos for use in Video Games or other media.
Although the two decisions appear contradictory, the Alexander decision was the result of a motion to dismiss and was not decided on the merits. In contrast, the Solid Oak Court considered a summary judgment motion and decided the issues on the merits. Time will tell whether the Court in Alexander will come to the same conclusions regarding the validity of the copyright claims as the Solid Oak Court.
The cases are Alexander v. Take-Two Interactive Software, Inc. et al, No. 3:18-cv-966, Memorandum and Order (S.D. Ill. Mar. 18, 2020) (Dkt. No. 176) and Solid Oak Sketches, LLC v. 2K Games, Inc. et al, No. 16-CV-722, Memorandum Opinion and Order (S.D.N.Y. Mar. 26, 2020).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.