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Wikilegal/Solid Oak Sketches, LLC v. Visual Concepts: The current state of copyright in tattoos in the United States

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Introduction edit

On March 26, 2020, in Solid Oak Sketches, LLC v. Visual Concepts, New York federal judge ruled that a depiction of tattoos of famous basketball players LeBron James, Kenyon Martin and Eric Bledsoe in a video game did not infringe the copyright in tattoos.[1]

The judge did not really analyze the question whether there can be copyright in tattoos, this was assumed. The court went ahead to reason that there was no copyright infringement. The use of the tattoos was de minimis, there was an implied license given to the players to use the tattoos as part of their likeness, and the use would meet the threshold of fair use.

The court's conclusion that there was no copyright infringement seems pretty straightforward, since holding otherwise would basically mean that unless the person owns copyright to tattoos on their body, all photos and videos of these persons would be potentially infringing.[2] But the reasoning the court used isn't necessarily that clear. The court uses three parallel independent arguments. All of them can be factually distinguished in future cases. And the judgment was handed down by the United States District Court of Southern District of New York, so its precedential value is limited (though SDNY is a persuasive jurisdiction). The impact of this case on future cases therefore has to be taken with a grain of salt.

Can tattoos be subject to copyright? edit

Before diving deeper into Solid Oak Sketches, LLC v. Visual Concepts, the sole question if there can be copyright in tattoos deserves some attention. The issue is disputed in the literature, even though the judge in Solid Oaks assumed there was copyright in the tattoos. Courts have also previously ruled that tattoos are copyrightable. But the leading authority for comprehensive analysis of copyright law and the most cited work in the field in the United States, Nimmer on Copyright, argues otherwise. Professor Nimmer says, in short, that there are many reasons to deny copyright protection to tattoos. This only holds if there are no preceding drawings on paper used to design the tattoo. If there are, copyright protection is secured, according to Nimmer. Similarly, if a fan decides to have an admired copyright work (for example a cartoon character) inked on their skin, there is a question of copyright infringement. Not whether such a tattoo is copyrightable.

The courts vs. Nimmer on Copyright edit

What is the issue? Nimmer argues that “a body, even as augmented, simply is not subject to copyright protection.” [3] The statute protects only the “works of authorship fixed in any tangible medium of expression.”[4] Nimmer asks, whether a human body fits that statutory language and answers that the proposition seems doubtful.[5] Plus, historically, courts have denied protection to gardens or food bowls, because the artwork wasn't sufficiently fixed in them.[6] They were simply changing too much. By the same token, human flesh too is “perishable” and “inherently changeable,” Nimmer argues. [7] However, the latter argument is rebuttable, he admits. [8] Especially in light of computer RAM being able to sufficiently fix works.[9] Nevertheless, recognizing that bodies can be “copyrightable objects” is still doubtful in Nimmer's view, famously criticized in Whitmill v. Warner Bros. Entertainment Inc.[10]

Whitmill v. Warner Bros. Entertainment Inc. edit

In 2011, the US District Court for the Eastern District of Missouri denied tattoo artist S. Victor Whitmill’s motion for a preliminary injunction. [11] The tattoo artist was seeking an injunction not to release the movie “The Hangover Part II.” in which Warner Brothers had one of the character's face inked with a tattoo that Whitmill previously designed and inked on Mike Tyson's face. Nimmer was an expert witness for Warner Brothers in the lawsuit and in his declaration, he argued that human bodies can't be protected by copyright law, even if “augmented” by tattoos. [12] The declaration was criticized by other scholars. In paragraphs 15 to 17 of the declaration, Nimmer admitted he used to think that tattoos were eligible for copyright protection, but realized he was wrong.[13] Prompting some to say that Nimmer changed his opinion to fit his client's needs.[14] Whitmill's motion for preliminary injunction was denied, but not because the tattoo wasn't copyrightable. The court based the decision on several factors. The first two weighed in for Whitmill. Specifically, the likelihood of Whitmill succeeding on the merits, and irreparable harm caused to Whitmill. [15] The court rejected (Nimmer's) argument that tattoos are not protected by copyright.[16] Here, their design was even first put on paper.[17] There was no parody or transformative use, because the entire tattoo was used on the actor's face, and had nothing to do with the plot of the movie.[18] On top of that, Warner Brothers used the tattoo in the movie's marketing.[19] All these arguments resonate in Solid Oak Sketches, LLC v. Visual Concepts, but with different facts, they weigh in for the video games publisher.[20] What weighed in favor of Warner Brothers in Whitmill's case, was the harm that an injunction would cause to the public.[21] The decisive factor seemed to be that movie theaters and concession vendors would suffer great and irreparable economic harm, which in its size and gravity outweighed the harm to the artist.[22] The ruling gave Whithmill reasons to be optimistic in winning on the merits. The case was later settled with conditions of the settlement confidential.[23][24]

Solid Oak Sketches, LLC v. Visual Concepts edit

This section goes through the arguments the judge made in the Solid Oaks Case.

De minimis use edit

The court said the tattoo displayed in the video games qualified as a de minimis use. Although de minimis use doctrine isn't used successfully very often, here it was a logical argument to invoke. [25] To establish a copyright infringement claim, “a plaintiff with a valid copyright must demonstrate that: (1) the defendant has actually copied the plaintiff’s work; and (2) the copying is illegal because a substantial similarity exists between the defendant’s work and the protectable elements of plaintiff’s work.”[26] Substantial similarity requires proof that the amount copied was more than de minimis.[27] The quantitative component of the de minimis analysis looks at “the amount of the copyrighted work that is copied,” “the observability of the copied work – the length of time the copied work is observable in the allegedly infringing work,” and “focus, lighting, camera angles, and prominence.”[28] “Observability” of the copyrighted work is fundamental to the quantitative component of the de minimis analysis.[29] This is judged from the “ordinary observer's” point of view.[30] The court reasoned that in this case there is no substantial similarity between the real world tattoos, and how they appear in the video game.[31] Firstly, the 3 players with the tattoos in question are unlikely to be included in the game, which has over 400 available players.[32] Secondly, even if the respective players are chosen, the tattoos are small and indistinct as the figure moves quickly between other players.[33] Further, the only place where the tattoo designs are displayed is on the skin of the players.[34] They aren't used on marketing materials or anywhere else. The tattoos are merely 4.4 to 10.96% of the size of the real life originals.[35] The tattoos may be observed as “undefined dark shading.”[36] The court concluded that the tattoos are hardly recognizable and an average video game player is unlikely to pay any attention at all to them.

Implied license edit

The court continued to reason that the tattooists granted the players nonexclusive licenses to use the tattoos as part of their likenesses.[37] The way that this would occur is through a grant of an implied license, which happens when the nature of a transaction clearly contemplates certain uses even if they are not expressly written down. In this case, according to the declarations submitted by the tattoo artists, they “intended the players to copy and distribute the tattoos as elements of their likenesses.”[38] In other words, when they inked the tattoos, they contemplated the players were likely to appear in the public and in the media, showing the tattoos as part of their likeness.[39]The players then “have given the NBA the right to license their likeness to third- parties,” and the NBA has granted it to the Defendant in the case, the video game producer.[40]

Fair use defense edit

The court also reasoned that there was a fair use of the tattoos. Under 17 U.S.C. § 107:

“The fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . ., scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include –

(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.”

Purpose and Character of the Use edit

Here, the courts look at “whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”[41] In other words, if the use is “transformative,” whether there are different purposes of the two works, difference in the size of the reproductions, the expressive value of the copied part is minimized, and the proportion of copied material. [42] Lastly, under this prong, courts look at whether the allegedly infringing use is of commercial nature. Here, the purpose of the use differs from the original purpose, and therefore is transformative. [43] The use of the tattoo in the video games is only an incidental part of the player's figure.[44] The tattoos are used to realistically depict players, while originally, they were created for the players to express themselves through body art. [45] The tattoos had to be used in whole to realistically depict the players. Although the video game itself is commercial, the video game producer does not use the depictions of the tattoos in any marketing. [46]

Nature of the copyrighted work edit

Some works are closer to the intention of copyright protection than others. It is more difficult to establish fair use of such works.[47] The courts consider whether the work is more expressive or factual. [48] When the work is more factual, there is greater space to establish fair use. Second, courts consider if the work is published. [49] Here, the nature of the tattoo designs is more factual than expressive, the court reasons. [50] Especially LeBron's tattoo which depicts a child. Other motifs are also commonly used in tattoos, and not very creative.[51]

Amount and substantiality of the use edit

Under this prong, the court looks at “whether the secondary use employs more of the copyrighted work than is necessary, and whether the copying was excessive in relation to any valid purposes asserted under the first factor.”[52] The entirety of a work is sometimes necessary to copy, and that does not on itself bar the fair use defense.[53] Which is the case here. Tattoos are copied in their entirety, but almost unrecognizable, and significantly reduced in size.[54]

Effect on the market edit

Lastly, the depictions aren't substitutes to the tattoos.”[55] First, the use of the tattoos as featured in the video game is transformative.”[56] Potential clients interested in purchasing tattoo designs and having them inked on their skin are unlikely to opt in to acquire a copy instead.”[57] Second, the court reasoned that there is no market for licensing tattoos for display in video games, and such a market is unlikely to develop.”[58] Therefore, there is no effect of the use of the tattoos in the video game on the market with tattoo designs.

Conclusion edit

Generally, whether tattoos are subject to copyright remains a disputed matter in the U.S. law. Although courts have previously allowed tattoos to enjoy copyright protection, whether requirements of copyrightability are met should be assessed case-by-case. Solid Oak Sketches, LLC v. Visual Concepts, as the latest case, adds another precedent that tattoos can be copyrighted despite scholars arguing otherwise.

In terms of potential infringements, although the impact of Solid Oak Sketches, LLC v. Visual Concepts on future cases remains unclear, the case provides reasoning which can be used when defending use of an image with tattoos, especially in de minimis cases.

The de minimis doctrine offers an argument that there is no actionable claim at all. If the use is de minimis, then there is no substantial similarity with the copyright work. In Solid Oak Sketches, LLC v. Visual Concepts we see that this does not mean that the tattoo cannot be shown as a whole. Though the depiction needs to be “unobservable.” Small pictures of tattoos on photos of the whole bodies of persons could arguably meet that threshold.

The implied license to use a tattoo as part of one's likeness does not help, if the image used is not of the person posting it.

Lastly, the fair use doctrine is arguably a high threshold to meet with an image, and highly factually specific. As is shown in the analysis above. So its use as an argument remains limited.

References edit

  1. ↑ Solid Oak Sketches LLC v. 2K Games, Inc., 1:16-cv-00724-LTS-SDA (S.D.N.Y. March 26, 2020).
  2. ↑ Goldman, Eric. Videogame Doesn’t Infringe Tattoo Copyright By Depicting Basketball Players–Solid Oak Sketches v. 2K Games. March 31, 2020. Available at: https://blog.ericgoldman.org/archives/2020/03/videogame-doesnt-infringe-tattoo-copyright-by-depicting-basketball-players-solid-oak-sketches-v-2k-games.htm. Last accessed on April 16, 2020.
  3. ↑ David Nimmer, Copyright in the Dead Sea Scrolls: Originality and Authorship, 38 Hous. L. Rev. 1, 29–30, 209 (2001), citing U.S. Const. amend. XIII.
  4. ↑ 17 U.S.C. § 102(a).
  5. ↑ Nimmer on Copyright § 2A.15[C]
  6. ↑ Kelley v. Chicago Park Dist., 635 F.3d 290, 303 (7th Cir.), cert. denied, 132 S. Ct. 380 (2011) and Kim Seng Co. v. J & A Imps., Inc., 810 F. Supp. 2d 1046, 1054 (C.D. Cal. 2011).
  7. ↑ Nimmer on Copyright § 2A.15[C]
  8. ↑ Id.
  9. ↑ Id. at § 2A.15[C] and § 8.08[A][5][a].
  10. ↑ Hangover II. Whitmill v. Warner Bros. Entertainment Inc., 11-cv-00752 (E.D. Mo. April 28, 2011).
  11. ↑ Whitmill v. Warner Bros. Entertainment Inc., 4:11-cv-00752 (E.D. Mo.).
  12. ↑ Bartow, Ann. When a treatise writer tries to reconfigure copyright law to benefit a client. May 25, 2011. Available at: http://madisonian.net/2011/05/25/when-a-treatise-writer-tries-to-reconfigure-copyright-law-to-benefit-a-client/. Last accessed on April 9, 2020. The declaration can be accessed here: https://www.scribd.com/document/56205580/Nimmer-Part-1.
  13. ↑ Id.
  14. ↑ Id.
  15. ↑ Liebesman, Yvette Joy. Copyright and Tattoos: Hangover II Injunction Denied, But the Copyright Owner Got Some Good News Too–Whitmill v. Warner Bros. (Guest Blog Post). May 24, 2011. Available at: https://blog.ericgoldman.org/archives/2011/05/copyright_and_t.htm. Las accessed on April 27, 2020.
  16. ↑ Id.
  17. ↑ Id.
  18. ↑ Id.
  19. ↑ Id.
  20. ↑ Id.
  21. ↑ Id.
  22. ↑ Id.
  23. ↑ Belloni, Matthew. Warner Bros. Settles 'Hangover II' Tattoo Lawsuit (Exclusive). June 20, 2011. Available at: https://www.hollywoodreporter.com/thr-esq/warner-bros-settles-hangover-ii-203377. Last accessed: April 27, 2020.
  24. ↑ MundoFut TV é um canal que transmite ao vivo o Campeonato Brasileiro Série A
  25. ↑ Goldman, Eric. Videogame Doesn’t Infringe Tattoo Copyright By Depicting Basketball Players–Solid Oak Sketches v. 2K Games. March 31, 2020. Available at: https://blog.ericgoldman.org/archives/2020/03/videogame-doesnt-infringe-tattoo-copyright-by-depicting-basketball-players-solid-oak-sketches-v-2k-games.htm. Last accessed on April 16, 2020.
  26. ↑ Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 63 (2d Cir. 2010).
  27. ↑ Castle Rock Entm’t, Inc. v. Carol Publ’g Grp, Inc., 150 F.3d 132, 138 (2d Cir. 1998) (citing Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997)).
  28. ↑ Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997)) (citing Nimmer on Copyright §§ 13.03[A][2]).
  29. ↑ Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998).
  30. ↑ Rogers v. Koons, 960 F.2d 301, 307 (2d Cir. 1992).
  31. ↑ Solid Oak Sketches LLC v. 2K Games, Inc., at page 13, 1:16-cv-00724-LTS-SDA (S.D.N.Y. March 26, 2020).
  32. ↑ Id.
  33. ↑ Id.
  34. ↑ Id.
  35. ↑ Id.
  36. ↑ Id., at page 14.
  37. ↑ Id., at page 15.
  38. ↑ Id.
  39. ↑ Id., at pages 4-6.
  40. ↑ Id.
  41. ↑ Bill Graham Archives, 448 F.3d 605, 608 (2d Cir. 2006).
  42. ↑ Id, at 609-11.
  43. ↑ Solid Oak Sketches LLC v. 2K Games, Inc., at pages 17-18, 1:16-cv-00724-LTS-SDA (S.D.N.Y. March 26, 2020).
  44. ↑ Id.
  45. ↑ Id.
  46. ↑ Id.
  47. ↑ Blanch v. Koons, 467 F.3d 244, 256 (2d Cir. 2006) (internal quotation marks omitted).
  48. ↑ Id.
  49. ↑ Id.
  50. ↑ Solid Oak Sketches LLC v. 2K Games, Inc., at page 20, 1:16-cv-00724-LTS-SDA (S.D.N.Y. March 26, 2020).
  51. ↑ Id.
  52. ↑ Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 96 (2d Cir. 2014).
  53. ↑ Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 613 (2d Cir. 2006).
  54. ↑ Solid Oak Sketches LLC v. 2K Games, Inc., at page 21, 1:16-cv-00724-LTS-SDA (S.D.N.Y. March 26, 2020).
  55. ↑ Id., at pages 21-22.
  56. ↑ Id., at page 22.
  57. ↑ Id.
  58. ↑ Id.
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