(This post has been co-authored by Akshat Agrawal and Angad Singh Makkar)
The long-standing litigation between Solid Oak Sketches (“Plaintiff”) and 2K Games & Take-Two Interactive Software (“Defendants”) was resolved (for the time-being) by a District Court of the Southern District of New York, through its order dated 26 March 2020. The case pertained to the use of copyrighted tattoos in a video game without obtaining a license from the tattoo artists/ supposed copyright owner. Though the general debate around copyrighting tattoos has generated substantial clarity on the topic over the past few decades, the issues arising out of video-game representation of a person’s tattoo remained relatively unaddressed going into this case. The District Court’s decision to grant summary judgment in favor of the defendants on the basis of their arguments of de minimis use and fair use has been met with appraisal and criticism and could certainly face a federal appeal in due time. In this post, we will briefly detail the case and analyze the same.
The controversy in this case arose out of the Defendants’ depiction of certain tattoos of three NBA players – Lebron James, Eric Bledsoe and Kenyon Martin – in their annual NBA simulation video game (which is branded ‘NBA 2K’). The Defendants have been releasing these games for a period of approximately two decades and it has garnered a large fan-base as it accurately simulates the ‘look and feel of an actual NBA game’, due in large part to its lifelike and authentic portrayal of NBA players. This is facilitated by the fact that NBA players have given NBA the right to license their likeness to third parties, and that the NBA has further granted such a license to the Defendants.
The Plaintiff however took objection to the public display of the tattoos of the aforementioned players in the video game (specifically, NBA 2K14, 2K15 and 2K16) claiming that this infringed its copyrights on those tattoos. The Plaintiff holds copyright in said tattoos by virtue of license agreements it signed with the tattoo artists who had inked the aforementioned players. Its main objection was that the Defendants had no right to publicly display these tattoos without seeking its permission and obtaining a requisite license from the get-go. The Defendants though were quick to point out that the tattoos comprise only a miniscule proportion of the video game data and are not clearly visible to 2K users during gameplay. Thus, the fundamental legal question here pertained to the applicability of copyright law to tattoos and particularly on the permissibility of digitizing tattoos through defenses of de minimis use and implied licenses. Another notable issue pertained to the distinction between the Plaintiff’s right to license these tattoos as opposed to the players rights to license their likeness/ image rights. The Defendants’ also filed a counterclaim for declaration of fair use, which was discussed by the court in its holding as well.
HOLDING AND ANALYSIS
De Minimis Use
Copyright infringement is deemed not actionable in instances involving de minimis use. De minimis means that the ‘copying of the protected material is so trivial as to fall below the quantitative threshold of substantial similarity’.[i] A de minimis analysis hinges upon (i) the amount copied, (ii) the observability of the copied work – the length of time the copied work is observable in the allegedly infringing work and (iii) factors such as focus, lighting, camera angles and prominence.[ii] Finally, substantial similarity must be determined through application of the ‘ordinary observer test’, which considers ‘whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work’.[iii]
Keeping in mind the aforementioned principles, the court observed that the tattoos in question only appear on 3 players out of over 400 available players in the game. Further, the factual record showed that the tattoos are too small and indistinct to be discernable during average gameplay. The tattoos were also not included in any of the game’s marketing materials, thereby removing the possibility of extra attention being drawn towards them. Additionally, the tattoos were merely ‘4.4% to 10.96% of the size that they appear in real life’. In light of these observations, the court asserted that no reasonable fact finder could find substantial similarity between the real tattoos and their video-game depiction. Therefore, the Defendants’ use of the tattoos was deemed de minimis.
The Defendants’ argued that they had an implied license to feature the tattoos as part of the players’ likenesses. Implied non-exclusive licenses arise in instances ‘where one party created a work at the other’s request and handed it over, intending that the other copy and distribute it’.[iv] Again, the court found in favor of the Defendants, stating that the undisputed factual record supported the reasonable inference that ‘the tattooists necessarily granted the players non-exclusive licenses to use the tattoos as part of their likeness. Notably, these non-exclusive licenses arose before the grant of any rights in the tattoos to the Plaintiff.
The court came to this conclusion on the basis that (i) the players each requested the creation of the tattoos, (ii) the tattooists created the tattoos and delivered them to the players by inking the designs onto their skin, and most importantly, (iii) the tattooists intended the players to copy and distribute the tattoos as elements of their likenesses, each knowing that the players were ‘likely to appear in public, on television, in commercials, or in other forms of media’.[v] Thus, the players had implied licenses to use the tattoos as part of their likeness (which predated the licenses acquired by the Plaintiff), which was further granted to the defendants.
Fair Use Counterclaim
The Defendants’ fair use counterclaim necessarily invoked an analysis under the Copyright Act (17 USC §107), as per which the court had to consider:
(a) the purpose and character of the use;
(b) the nature of the copyrighted work;
(c) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(d) the effect of the use upon the potential market or value of the copyrighted work
(referred to as factors (a), (b), (c) and (d) in the discussion below)
As per established jurisprudence on factor (a), the court must consider whether the allegedly infringing use is ‘transformative’. This is determined by the purposes of the two works, the size of the reproductions, the expressive value of the reproduced material, and the proportion of copied material.[vi] In this case, the court opined that the purpose of copying the tattoos for the video game was entirely different from the purpose for which they were created. To wit, the tattoos were created as a means for the players to express themselves, whereas their reproduction in the game was done in order to accurately depict the players and make them more recognizable. As for the other factors, it was stated that the in-game tattoos were significantly smaller in size, lacked much expressive value (considered ‘virtual noise’) and constituted an inconsequential portion of NBA 2K. Hence, factor (a) was in favor of a fair use finding.
Coming to factor (b), two main sub-factors were discussed – whether the work is expressive or creative, or more factual and whether work is published or unpublished. It must be noted here that reproduction of factual/informational works that have been previously published is most conducive to a finding of fair use.[vii] To this end, the court observed that the tattoos had been previously published. Additionally, it deemed the tattoos to be more factual than expressive insofar as they were based on other factual works or comprised of ‘representational renderings of common objects and motifs’ (a detailed analysis of each tattoo can be found on Pages 4-6 and 19-20 of the order). Thus, this factor also weighed in favour of a finding of fair use.
On factor (c), the court discussed that copying the entire work does not always weigh against fair use as copying ‘the entirety of a work is sometimes necessary to make a fair use of the image’.[viii] Here, though the defendants had copied the tattoos in their entirety, this was done to effectuate the transformative purpose of creating an authentic virtual NBA game experience. This would not have been possible had the defendants copied a smaller portion of the tattoos. And, as noted already, the tattoos were significantly reduced in size so as to greatly limit the visual impact of their artistic expression. Accordingly, factor (c) was also found to not weigh against fair use.
Finally, the court came to factor (d), which is concerned with whether the secondary use of the copyrighted work serves as a substitute for the original work and causes economic injury to the copyright-holder. Importantly, transformative use is considered to not cause actionable harm because ‘by definition, such use does not serve as a substitute for the original work’.[ix] The Defendants’ transformative use ipso facto could not be considered a substitute for the original tattoos and hence, it could not have deprived the Plaintiff of any significant revenues. Factor (d) too did not weigh against a fair use finding then. Therefore, the court found that the Defendants’ use of the tattoos in the NBA 2K video games constitutes fair use.
An interesting aspect of this case is that for the first time in the American jurisprudence, it has been clarified that tattoos are protectable by copyright, although the court didn’t really get into reasonably answering the academic concerns raised around it. By implicitly allowing for copyright defences to be applicable, the court has held that tattoos are copyrightable and the tattoo artist is the owner of the copyright in the same. All the earlier cases wherein this determination was enquired had resulted in a settlement, without a definite legal pronouncement on this aspect. The core of this controversy on copyrightability relies upon the medium of expression, peculiarly being the human body. The question of the application of the “useful articles” doctrine, permanence as well as whether copyright actually incentivises tattoo production were although not considered by the court. Yet, the holding of the court, incidentally answers these questions with a conclusion that a copyright protection is feasible and extendable to tattoos.
As far as the useful articles doctrine is considered, the prime opposition to the copyrightability of the tattoos are their presence on a human body which are functional limbs and comprise of a useful article. However the application of the conceptual separability test, can be a reasonable reason to conclude that tattoos may deserve a copyright protection in that light. Conceptual separability establishes a more cognizable separation between artistic and utilitarian functions and thus better supports copyrightability. The fact that the artistic features of the tattoo and the utilitarian function of the limb/ body part that it is displayed on clearly provides for a reason as to why copyrightability might just succeed. This was established in the case of Pivot Point where the court held that, “conceptual separability exists . . . when the artistic aspects of an article can be ‘conceptualized as existing independently of their utilitarian function’”.
Another interesting aspect of this decision was the way it has harmonised the conflation of the interests of the copyright owner/ tattoo artists as against the image rights of the individual who has the tattoo on them. The court has clearly held a higher protection for one’s likeness and personhood over a property interest in a certain work of art, by establishing an implied license as well as a case of fair use. This effectively shows the approach of the US court adopted with respect to peculiar mediums of expression. The court has appreciated the difficulty associated with the implementation of copyright purely, when the medium of expression is not one which is considered to be normal. The court, realising the same has limited the application of copyright with respect to the feasibility and enforceability, setting a good flexible precedent.
A core theoretical question which may yet be posed by academics here is that in an incentive-based utilitarian copyright system as in the United States, is there even a need for copyright to extend to tattoos? Quoting Aaron K Perzanowski from here
“Where non-legal incentives, whether norm-based or market-based, pervade a creative community, the risk of uniformity costs from overprotection is particularly high, and we should be particularly sceptical about the need for copyright protection. Even if tattoo artists were denied copyright altogether, certain non-legal incentives suggest that their creative output would remain unchanged.”
This is a question definitely to be pondered upon when extending copyright protection to newer forms of expression.
[i] Sandoval v. New Line Cinema Corp., 147 F3d 215, 217 (2d Cir. 1998).
[ii] Ringgold v. Black Entertainments Television Inc., 126 F3d 70, 75 (2d Cir. 1997).
[iii] Rogers v. Koons, 960 F2d 301, 307 (2d Cir. 1992).
[iv] Weinstein Co. v. Smokewood Entertainment Group, 664 F Supp 2d 332, 344 (SDNY 2009).
[v] Page 15 of the Order, dated 26 Mar 2020.
[vi] Bill Graham Archives v. Dorling Kindersley, 448 F3d 605, 608 (2d Cir 2006).
[vii] Blanch v. Koons, 467 F3d 73, 256 (2d Cir 2006).
[viii] supra n7, 613.
[ix] Authors Guild v. Google Inc., 804 F3d at 223.
Image source: here