Breaking Down How NBA 2K Producer Defended Its Rim Against Tattoo Copyright Claims

On Thursday, the video game industry won a major battle in a longstanding controversy over the reproduction of tattoos in sports video games. The case involved a copyright action brought by Solid Oak Sketches Inc. to enforce exclusive rights acquired from artists who did tattoo work for LeBron James, Kenyon Martin and Eric Bledsoe. In the case, Solid Oak Sketches sought damages under the Copyright Act from Take Two Interactive Software Inc. for featuring reproductions of the the purportedly copyright-protected tattoos on avatars for James, Martin and Bledsoe in the popular NBA 2K video games.

In the decision, U.S. District Court Judge Laura Taylor Swain found that: (a) the degree of copying of the tattoos was de minimis rather than substantial, (b) the producer had a non-exclusive implied license to reproduce the tattoos in the video games, and (c) the copies constituted “fair use” because of their transformative nature. To best understand the significance of Judge Swain’s decision, it’s necessary to unpack each finding, starting with the degree of copying.

Degree of Copying

To sustain a copyright action, the plaintiff must include in their claims enough evidence to show that the defendant copied their work and that the copy is substantially similar to the original creation. For a copy to qualify as substantially similar under the Copyright Act, the similarities between the works must be more than de minimis (i.e. minuscule). Judge Swain found that the degree of copying in this case fell below the threshold of substantial copying. In reaching this decision, Judge Swain utilized the ordinary observer test, which requires the court to consider whether a lay person would recognize that the reproduction substantially copied and made use of the plaintiff’s copyright protected work.

The court held that no reasonable lay person could conclude that the tattoos featured in the game are substantially-similar to those featured on the bodies of the actual players. In supporting that holding, Judge Swain found that the images of the tattoos were distorted to some degree and were too small in scale to matter (a mere 4.4% to 10.96% of the size of the real things). Not just that, but only three out of 400 players featured in the game had tattoos that were at controversy. For the court, that amount of copying qualified as de minimis rather than substantial.

The Players Had A Non-Exclusive Implied License

The court’s finding that the use was de minimis would have been enough to dismiss the plaintiff’s claims against the video game producer. Yet, the court also found that the producer had a non-exclusive implied license to reproduce the tattoos in its NBA 2K video games. An implied license is one in which there exists an implication that someone has the authority to reproduce a copyrighted work. It’s generally understood that those who are tattooed enjoy an implied authorization from tattooists to permit the tattoos to be shown in public and in photographs or films that feature the person who is tattooed. The reproductions at issue in this case, however, were not actual images of the athletes. Instead, the tattoos were found on virtual avatars created by artists who made realistic, but electronic, representations of the athletes and their tattoos.

In addressing this problem, Judge Swain recognized that her higher ups in the Second Circuit Court of Appeals had not yet ruled on the precise definition for what qualifies as an “implied license.” Although, the Second Circuit had previously found that one party could grant to another a non-exclusive implied license that permits the latter to reproduce and distribute copyright protected work belonging to the former. Judge Swain looked to the evidence and found that the tattooists provided LeBron James and the other players with a non-exclusive implied license based on the intent for the celebrity athletes to make the tattoos part of their identities; which includes the reproduction of their images for all sorts of commercial purposes.

This intent was evidenced in statements from tattoo artists who asserted that they not only intended for the players they tattooed to make the art part of their identities, but they did so with the understanding that the tattoos would be featured in all sorts of commercial uses, including video games. LeBron James even filed a declaration of support with the court and in that declaration he stated that he should be able to do whatever he wants with his tattoos as they are part of his “person and identity” and that any image of him without them will not capture those aspects. The court agreed with James and held that the players were able to subsequently license the rights to their identities (including the tattoos) for reproduction in the NBA 2K video games.

Fair Use (The Transformative Use Doctrine)

The final basis for Judge Swain’s order in favor of the defendants involved her holding that the defendants made fair use of the reproduced tattoos. The fair use doctrine recognizes an exception to copyright protections for situations in which reproduction is done for the purpose of criticism, comment, news reporting, teaching, scholarship or research. In evaluating whether use is fair, courts must look to the purpose and character of the reproduction. In doing so, courts may find commentary that qualifies as fair use when the reproduction is transformative. The transformative use doctrine applies when the original work is used as the raw materials for constructing an entirely new and expressive creation.

Judge Swain found that while the expressive value of the tattoo reproductions in NBA 2K was minimized, there existed enough “undisputed evidence” in the record for the court to find transformative use. To support that decision, Judge Swain recognized that the purpose, character, nature, and amount of use of the tattoos in the video games did not rise to the level of substantiality. Judge Swain also found no negative influence on the market for the tattoos that resulted from reproductions of the artists’ work in the NBA 2K games because Solid Oak Sketches did not have the publicity rights needed to move forward with plans to market the players’ tattoos on apparel.

While the amount of use and its effect on the market are all critical considerations for fair use, for a work to be considered transformative it must be infused with new expressive content rather than literal reproductions. In the context of this case, the tattoo reproductions were probably closer to literal use rather than transformative because there were no new expressions infused into the electronic representations of the tattoos in the games. In this regard, the facts found in this case resemble closely those in two relatively recent right of publicity cases in which the Third and Ninth Circuits refused to find transformative use in the reproduction of student-athlete likenesses in the NCAA Football video games produced by Electronic Arts. And in both cases the courts found that the game producer failed to satisfy the expressive requirement for transformative use because the games literally reproduced the images of actual athletes in the environments that gave rise to their celebrity.

Granted, it could easily be argued that Judge Swain’s decision does not provide the cleanest or most-appropriate application of the transformative use doctrine, but it’s also important to note that fair use was just one of three bases for her decision.

So What’s Next?

Some commentators have gone as far as labeling Judge Swain’s decision as “landmark” because it directly addressed a complicated copyright problem of tattoo ownership that has perplexed both players and pundits for years. In fact, the National Football League Player’s Association (NFLPA) has been advising its players to obtain a copyright release from their tattoo artists that permits the players to feature their ink in advertisements and in other commercial productions. This begs the question: Should copyright law require athletes and other celebrities to lawyer up every time they get new tattoos?

Unfortunately, this case does not ultimately resolve that important question because the decision was delivered by a district court and therefore the outcome does not provide controlling precedent for resolving future cases. Further confusing this controversy is the fact that several lower courts in other jurisdictions have hinted that they would find in favor of enforcing a tattoo artists’s copyright interests against unauthorized commercial reproductions of their work. The parties in those cases, however, reached settlement before the legal issues were resolved by the respective courts.

The battle over tattoo ownership is very controversial because it requires courts to balance the copyright interests of tattoo artists against the image rights inherent to those who are tattooed. Included in the debate is an important question as to whether courts should find the existence of a copyright interest in another person’s skin. It’s one thing to enforce the artist’s rights to drawings of tattoo art (flash), but it’s another to allow them to claim an ownership interest in art that is etched onto someone else’s body.

Accordingly, some degree of uncertainty will remain on the enforceability of copyright law for tattoos until an appellate court hears and resolves a case that presses the issue. Unfortunately, that likely won’t happen in this case either. When reached for comment, Solid Oak Sketches’ attorney Darren Heitner stated that his client did not intend to appeal.

So, for the time being, athletes and other celebrities should proceed with caution and optimism in terms of how they manage the ownership of their tattoos. The NFLPA and other player associations should still advise their players to obtain waivers or releases from their tattoo artists as a means for precaution. However, reason for optimism exists in that Judge Swain’s reasoning provides a strong degree of persuasive authority if another and similar tattoo copyright claim is filed that challenges the use of athlete or celebrity tattoos in video games or other commercial productions.