Video game maker, 2K Games, has successfully defended a claim made against it by Solid Oak Sketches, a tattoo studio, for copyright infringement of certain National Basketball Association players’ tattoos that had been depicted on their avatars in the game series ‘NBA 2K’.

The tattoos in question had been designed by Solid Oak and were exclusively licensed to the studio. New York Federal Judge, Laura Taylor Swain, accepted 2K’s argument of de minimis use and ruled that an implied licence had been granted to 2K of the tattoos.

Background

Solid Oak issued proceedings against video game makers 2K Games and Take-Two Interactive Software Take-Two on 2 February 2016 for copyright infringement under the Copyright Act of 1976. The infringement related to the tattoos of NBA players LeBron James, Eric Bledsoe, and Kenyon Martin, that were depicted in the NBA 2K video game series.

Solid Oak- who owned the copyright of the tattoos an under exclusive licence filed with the US Copyright Office-  filed a lawsuit alleging that 2K Games and Take-Two did not have the right to reproduce the body art in the video game and display it on the avatars of the NBA players, which they had done in the video game series.

The Defendants filed a motion to dismiss the claim under the defence doctrines of fair use and de minimis use which was unsuccessful but were subsequently successful in dismissing the Solid Oak’s claim for statutory damages and legal fees. Solid Oak therefore amended their pleadings. On 30 March 2018 the Claimant’s application for judgment was dismissed.

Decision

On 26 March 2020, District Judge Swain ruled that the tattoos used on the NBA players’ avatars were not substantially similar to the physical tattoos and that their use in the game was justified by the doctrine of de minimis use, given that (a) only 3 of the players’ avatars in the video game were tattooed and (b) the tattoos in the game are reduced in size and the game is in motion making it difficult for a person to discern the tattoos in any real detail:

The Tattoos only appear on the players upon whom they are inked, which is just three out of over 400 available players. The undisputed factual record shows that average game play is unlikely to include the players with the Tattoos and that, even when such players are included, the display of the Tattoos is small and indistinct, appearing as rapidly moving visual features of rapidly moving figures in groups of player figures.”

Furthermore, the Judge ruled that 2K Games had an implied licence to use the players’ body art as it was party to an agreement with the NBA, which the NBA players also were:

Here, the undisputed factual record clearly supports the reasonable inference that the tattooists necessarily granted the Players nonexclusive licenses to use the Tattoos as part of their likenesses, and did so prior to any grant of rights in the Tattoos to Plaintiff” and that

the Players “have given the NBA the right to license their likeness to third-parties,” and the NBA has granted such license to Take-Two. … The Players also granted Take-Two permission to use their likeness… Therefore, 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 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“.

Moving Forward

This case has settled questions surrounding copyright of tattoos and use that had been hanging over the legal profession since at least 2011.

In that year, a tattoo artist, who had inked the distinctive face tattoo of Mike Tyson (the ex-heavyweight boxer), sued Warner Bros. for copyright of the tattoo because Ed Helm, one of the actors in the ‘Hangover: Part II’, had a similar tattoo in the film, and the case was settled outside of court.

As such, this judgment has brought a lot of clarity to the question of whether a tattoo belongs to the tattoo artist or the person who has been tattooed, with the Judge coming down on the side of the tattooed person: “tattooists necessarily granted the Players nonexclusive licences to use the Tattoos as part of their likeness”.