A recent federal court decision provides some insight into how U.S. copyright law might apply to the unique medium of tattoo art.  

Background

This case began (see our initial post here), back in 2016 with a federal lawsuit filed by an entity, Solid Oak Sketches, that holds the licensing rights of a group of tattoo artists who created tattoos on several pro basketball stars, including LeBron James, Kobe Bryant, and DeAndre Jordan, among others.  The complaint alleges that those rights were infringed when defendants, creators of the video game “NBA 2K16,” included images of the players—including their tattoos—in the game.  See Solid Oak Sketches, LLC v. Visual Concepts LLC et al., Docket No. 16-cv-724 (S.D.N.Y.).  It alleges that part of the video game’s appeal is its detailed graphics, meaning the tattoos add real value for the defendants.  It also alleges that the parties were in negotiations prior to the game’s release, but the defendants ended talks and released the game anyway.  The complaint seeks both monetary and injunctive relief.
 
The following year, we wrote about a similar case by an individual tattoo artist, James Hayden, who tattooed several major NBA players.  His complaint, like Solid Oak’s, asserted claims related to the fact that those tattoos were copied in digital depictions of the players in a video game.  See Hayden v. 2K Games, Inc., et al., Docket No. 17-cv-02635 (N.D. Ohio).  He also went a step further, asserting a claim under the Visual Artists Rights Act of 1990 (VARA), 17 U.SC. § 106A, urging that the defendants have violated his VARA rights by failing to give him credit for his work, and by “distorting, mutilating and/or modifying” his works in a manner that is prejudicial to him.
 
Issues
            
Prior to these cases, there was not much guidance from courts on how copyright applies to tattoo art, as distinct from other types of visual art; a handful of other lawsuits involving tattoo copyrights have ended without definitive rulings.  (See here and here for examples.)  But just because the contours of copyright protection over tattoo art are fuzzy, that does not mean there are no legal rights in play.  It seems relatively clear that tattoos are, at least in theory, copyrightable: they are “fixed” on someone’s skin and can certainly be “original” as required by the copyright statute.  Rather, the trickier legal questions are about defenses to copyright infringement; for example, might a defendant invoke the fair use defense?  Who owns the copyright—the artist?  Or is it perhaps a work for hire owned by the tattoo parlor that employs the artist?  If the tattoo customer helped design it, do they have some joint authorship right?  And regardless of ownership, does the tattoo’s bearer have some implied license related to the tattoo, and if so, what is the scope of that license?  (Would it extend only as far as display during daily life?  To being photographed or filmed?  To depicting the tattoo in other artistic renderings of the person?  Especially for profit, as with these video games?)  And how do the copyright issues intersect with issues related to the players’ rights of publicity?
 
Procedural Background
 
In the Solid Oak case, the defendants won an initial skirmish by persuading the court to dismiss the complaint’s demand for statutory damages and attorneys’ fees.  The court there ruled that, because the initial alleged infringement occurred prior to registration of the copyright in the tattoos, statutory damages and legal fees were unavailable (see 17 U.S.C. § 412).  The court rejected the plaintiff’s argument that each new version of the video game (which is released annually) is a separate infringement, instead explaining that “when the same defendant infringes on the same protected work in the same manner as it did prior to the work’s registration, the post-registration infringement constitutes the continuation of a series of ongoing infringements.”  
 
And in early 2018, the court refused to dismiss Solid Oak’s infringement claims on the pleadings.  The defendants had argued that plaintiff’s claims are doomed on two separate bases: 1) that their use of the plaintiff’s works is so trivial as to be de minimis, and 2) that their use constitutes fair use under 17 U.S.C. § 107.  The court held that it was simply too early to make those determinations without the benefit of discovery.  The court noted that, in other cases holding that a use of another copyrighted work was de minimis, the parties agreed as to how long the allegedly-infringed work was displayed in the context of the allegedly infringing work (for example, an artwork visible for a few seconds in the background of a scene in a movie).  But here, the parties fundamentally disagreed about “the durational aspects of the copying”; the defendants argued the tattoos were visible only fleetingly, while the plaintiff argued that, depending on what choices a player of the video game might make, the tattoos could be made be plainly observable.  Where the game can vary in each iteration, the court was unable to make a determination as a matter of law as to whether the “reasonable lay observer” might find the game “substantially similar” to the original tattoos.  And for similar reasons, the court held, it could not truly conduct a meaningful side-by-side comparison of the works in order to assess and rule on fair use as a matter of law at this early stage of the case.  However, the court left the door open for those defenses to be revisited later in the case.  
 
Summary Judgment For Defendants
 
After the parties engaged in months of discovery, the defendants filed a summary judgment motion, again putting forward their de minimis and fair use defenses; they also advanced an additional defense that the players had an implied license to use the tattoos as part of their likeness, and because the game had the right to use the players’ likenesses, the game could not be liable for infringement.  In a decision in late March, the court held that all those defenses were meritorious, and that the plaintiff’s claims should be dismissed.
 
De Minimis Defense
 
The de minimis defense in copyright stems from the fact that a copyright infringement plaintiff must show that “substantial similarity” exists between the defendant’s work and the protectible elements of plaintiff’s.  Courts have held that, to be substantially similar, the amount copied must be more than de minimis—that is, the copying of the protected material is so trivial as to fall below the quantitative threshold of substantial similarity.  Substantial similarity is analyzed through the lens of an “average lay observer,” and courts examine how much of the copyrighted work is copied, how observable it is in the allegedly infringing work, and other factors such as “focus, lighting, camera angles, and prominence.”
 
Here, the court held, the tattoos only appear on a few players in the video game, and even when such players are chosen for inclusion in a given gaming session, the tattoos simply appear “as rapidly moving visual features of rapidly moving figures in groups of player figures,” not easily observable in enough detail to identify their subject matter, let alone their aesthetics.  In short, the tattoos often do not even appear in a user’s game and, “when they do, they are so small and distorted by the camera angles and other game elements that they are indiscernible to the average game users.”  And while plaintiff had previously argued that users could manipulate the video game’s features to focus on or otherwise make the subject tattoos more prominent, plaintiff’s summary judgment submissions did not put forth evidence to support that argument.  
 
Implied License
 
The court also ruled that the tattoo artists had given the players an implied license to use the tattoos as part of their likenesses.  Second Circuit law is unsettled as to when an implied non-exclusive license will be found, but courts generally have found an implied non-exclusive license “where one party created a work at the other’s request and handed it over, intending that the other copy and distribute it.”  Here, the court pointed out deposition testimony from the tattoo artists, indicating that they each understood that their customers were NBA players who would likely be displaying the tattoos if they appeared in any media.  Thus, when the players later granted the NBA permission to use their likenesses (long before the artists assigned any rights to Solid Oak), and the NBA in turn granted licenses to defendants, the defendants were also authorized to use the tattoos.
 
Fair Use Defense
 
As we’ve explained in other posts on fair use (see here for some examples), the fair use doctrine, codified at 17 U.S.C. § 107 (see here), provides a defense to copyright infringement claims.  The statute enumerates four non-exclusive factors that should be considered by courts in determining whether something constitutes fair use: (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.”
 
Here, for the first factor, the court held that the tattoos serve a totally different purpose in the game than they did when originally created on the players (their original purpose was the players’ own self-expression, while the game versions serve to enhance the general recognizability of game figures as depictions of the players).  Their expressive value is also very different; as compared with the real tattoos on the players, the game versions are smaller and far less observable in terms of their detail and aesthetic appeal.  And while the game is, of course, a commercial endeavor, the tattoos are not used in advertising and consumers are not purchasing the game because of the tattoos.
 
As to the second factor, the tattoos’ expressive value was, in the court’s view, minimal because, as the tattoo artists admitted, they largely consisted of “common tattoo motifs or were copied from designs and pictures they themselves did not create.”
 
For the third factor, the court held that, while the tattoos were copied in their entirety, Defendants had to do that “in order to effectuate the transformative purpose of creating a realistic game experience.”  And the tattoos were then reduced in size and recognizability.  
 
As for the fourth factor, the court reasoned that potential purchasers of the tattoo designs were unlikely to “opt to acquire” the video game instead.  Another important aspect of the this factor’s analysis was the fact that Solid Oak did not and was not likely to license the tattoo designs, especially because it would likely need the players’ own consent so as not to infringe on their rights of publicity. 
 
A Note On Expert Testimony
 
As a separate matter, the Plaintiff had sought to exclude the opinions of four experts put forward by the defendants.  The court, however, ruled that the defendants’ expert reports met “Defendants’ burden of demonstrating that the experts’ testimony is the product of reliable principles and methods, that their opinions and data are relevant to the issues raised in Defendants’ motion for summary judgment, and their probative value is not substantially outweighed by any danger of unfair prejudice.”  
 
The expert testimony shed light on issues such as: consumer surveys regarding why consumers purchased NBA 2K, and whether, and to what extent, the Tattoos drove consumer demand for the game; the cultural and expressive meaning of tattoos and customs and norms in the tattoo industry; factors affecting the market for video games and the market for licensing copyrights for use in video games; and the lack of a market for licensing tattoo designs.
 
Impact of the Ruling
 
Barring an appeal, the court’s March decision resolves the central issues in this case.  There is still pending one counterclaim by the defendants for “declaratory judgment of fraud on the Copyright Office,” but the court has ordered the parties to confer regarding possible settlement of that claim, and it seems unlikely that the case will proceed much farther on that basis alone.  
 
The ruling represents a significant victory for these defendants, and provides the defendant with a declarationvalidating not just one but three different defenses that would be available to litigants in future cases over tattoo copyrights.  Other pending tattoo lawsuits will likely be impacted by this ruling.  In the Hayden suit, still pending in Ohio, the parties have been engaged in discovery.  And another suit, pending in Illinois, deals with claims by a tattoo artist against the makers of a video game that depicts a wrestling star, Randy Orton, complete with tattoos.  (The court in that case recently rejected the defendants’ initial threshold defenses, regarding personal jurisdiction and vagueness, allowing the plaintiff’s claims there to move forward.)  The Southern District of New York’s analysis in Solid Oak is not technically binding on either of those courts; but given how similar these cases are, many lawyers believe it is likely that the parties and judges in those lawsuits will at least consider the reasoning. The Solid Oak court’s analysis of course leaves room for the possibility that some other tattoo litigation might come out differently—for example, if a reproduction of a tattoo rendered the tattoo far more discernible; if a tattoo represented a highly original artwork (as opposed to a common tattoo motif); and if the tattoos were an important part of the infringing product; any of those facts might make a difference in a court’s fair use analysis.  But overall, the decision is a favorable sign for anyone looking for guidance in depicting celebrities in a way that also displays their tattoos.
 
At least one commentator has opined that the court’s de minimis analysis is arguably “more interesting” than the fair use analysis.  In particular, the court’s reasoning considers how a de minimis defense might apply in a situation where an alleged infringer’s use of the plaintiff’s material does not lend itself to a clear-cut quantitative assessment (for example, an artwork that is visible for X number of seconds during a longer video) but rather might fluctuate based on how a consumer interacts with the product.  As media becomes increasingly interactive, such analytical challenges may become more common.
 
Additionally, the court’s discussion of expert reports also is emblematic of an ongoing challenge in fair use litigation.  Courts and parties have to draw a fine line in that a fact-finder needs useful data and background information to help them decide a case, but expert testimony must not cross over into blatantly supplying legal conclusions or testifying about matters that lay fact-finders should weigh for themselves (see here for another recent case that has grappled with the proper role of expert testimony in fair use cases).
 
Finally, the case is also a reminder that at least some copyright disputes might be mooted if parties took the time to lay out their understandings in a contract at the outset of their dealings.  For example, if tattoo artists and their customers, as a matter of course, entered an agreement regarding ownership and licensing of a tattoo design, potential disagreements later might be prevented.
 
We’ll continue to follow the evolving case law on this topic, both because it represents a unique art form, and because the resulting legal analysis often provides useful insight into complex copyright issues such as fair use, licensing, and de minimis copying.