As Scott Hervey previously wrote on the IP Law Blog, a tattoo artist won a copyright lawsuit against a video game publisher for showcasing an athlete with their tattoo design in a game. Scott and Josh Escovedo discuss the case on this episode of The Briefing.

Watch this episode here.

Read Scott’s article here.

Show Notes:

Scott: A jury in the district court for the southern district of Illinois in the case of Alexander v. Take-Two Interactive Software found that the depiction of tattoos on wrestler Randy Orton in a video game published by Take Two Interactive infringed the tattoo artist’s copyright in the tattoos. I think the trial court, and the court of appeals that rejected Take Two’s defenses- defenses that won the day in the US District Court for the Southern District of NY in Solid Oak Sketches v 2k Games-got it all wrong and this decision could have wide-ranging implications. We are going to talk about this on the next installment of the briefing by the IP law blog.

Scott: So here is the history of this case. Tattoo artist Catherine Alexander sued Take-Two and 2K Games in the U.S. District Court for the Southern District of Illinois for depicting World Wrestling Entertainment wrestler Randy Orton in the video game WWE 2K. On a motion for summary judgment, Take 2 made the same arguments that garnered it a win previously Solid Oak Sketches v 2k Games – (1) Take-Two’s use of the tattoos was authorized by an implied license, (2) the fair use doctrine insulates their utilization of the tattoos and (3) the tattoos constitute a de minimis part of WWE 2K

Josh: Alexander testified in 2009, Alexander contacted WWE’s legal department to negotiate about a possible faux sleeve product depicting her tattoo works. A WWE representative laughed at her and stated she had no grounds and that they could do what they wanted with Orton’s images because he was their wrestler. WWE then offered Alexander $450 for extensive rights to use and produce the tattoo designs on WWE products. Alexander declined the offer and advised WWE that she did not grant it any permission to copy, duplicate, or otherwise reproduce any of her designs. Defendants have released and promoted wrestling video games titled “WWE 2K16”, “WWE 2K17”, and “WWE 2K18” which feature Ortons

Scott: In the Solid Oaks case, as to the implied license defense, the court found that the NBA players featured in the video game had implied licenses to use the tattoos as elements of their likenesses and the video game publisher’s right to use the tattoos in depicting the players derives from these implied licenses. A crucial element of the court’s finding – the tattoo artist knew their subject was likely to appear “in public, on television, in commercials, or in other forms of media. Alexander testified that she has never given permission to any of her clients to use copies of her tattoo works in videogames and argued that the WWE and Take 2 are conflating Orton’s rights to his own likeness and right to appear in media with an implied license to use her copyrights in unlimited and other commercial ways, such as in video games

Josh: In the ruling on the motion for summary judgment, the Alexander court found that it wasn’t’ clear whether Alexander or Orton actually every discussed whether and to what extent Orton had permission to copy and distribute the tattoos, and whether any implied license would include sublicensing rights, and denied summary judgment on this affirmative defense.

Scott: The court also found that the use was not fair use. The key to a finding of fair use is whether the new use is transformative. Does 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; it asks, in other words, whether and to what extent the new work is “transformative.”

Take Two argued that its use of the copyrighted tattoos was “transformative; that Alexander inked the tattoos at Orton’s request to reflect his personal expression, whereas Defendants depicted the tattoos in WWE 2K to depict Orton realistically. The court found a factual dispute in this case as to Defendants’ purpose in using the tattoo works. Alexander contends she created the tattoos to display them on Orton’s body and that Defendants used the tattoos for the same purpose; to display them on Orton’s body in the videogames. The court bought this.

Josh: So after the court’s ruling on the motions for summary judgment, the matter proceeded to trial. Apparently, shortly before trial the court held that the de minimis use defense was not applicable. Then, it appears that the court refused to allow the jury to hear instructions on the implied license affirmative defense, even though neither party objected to the jury getting this instruction. Similarly, the court refused to allow the jury to hear instructions on the affirmative defense of waiver.

Scott: However, the jury did get instructions on fair use, very bare bones instructions which is less than helpful for a case like this. However, fair use Fair use is a mixed question of law and fact, and the jury is only supposed to resolve disputed factual issues underlying the defense which, according to the court’s ruling on the motion for summary judgment, was the defendant’s purpose for using the tattoos. After that, it was for the court to determine the ultimate applicability of fair use. So it seems that the trial court didn’t get instructions on the affirmative defenses it should have decided and essentially decided both the factual and legal issues applicable to the fair use affirmative defense,

Josh: This certainly sounds like grounds for appeal and I am sure that Take 2 will, however we have to deal with the aftermath of this decision. Counsel for Alexander is quoted as saying that Alexander’s win at the trial court could “open the floodgates of litigation) and I think I agree with him.

Scott: I do too Josh. I think that every tattoo artist who inked an actor, musician or sports figure will be looking for some depiction of the tattoo in medias as a hook for a potential lawsuit unless the artist had enough foresight to get a signed release. But even crazier is the practical effect of this ruling. Essentially, once someone gets a tattoo, that person loses the full control over that body part. Now the tattoo artist has, essentially, a blocking right on the depiction of that body art. If a celebrity has an arm tattoo and that celebrity has to be shirtless in a movie, unless the producers covered the tattoo up with makeup- which they very well may need to do after this ruling, the producer would need to get a release from tattoo artist. And what if the tattoo artist didn’t want to grant a release and for some reason the producer couldn’t cover the tattoo up, that could mean that the actor may lose the job. Sounds a bit extreme, but this is a logical extension from the decision.

Josh: And what if that arm tattoo is fully visible in the celebrity’s social media pictures. Technically that would be an infringing public display of the work, I understand the fundamentals of a paparazzi suing a celebrity when that celebrity post a picture taken by the paparazzi without the permission, but I have a very hard time with a tattoo artist suing a celebrity when the celebrity takes a selfie that captures the tattoo on the celebrities arm.

Scott: Agreed. This decision means that persons who have tattoos no longer have complete control and autonomy over their persona. Because a person’s outward appearance is part of that person’s right of publicity, how is not reasonably understood that, when a person gets a tattoo that tattoo becomes inexorably merged with the person’s likeness and that any rights a person has in exploiting their likeness would extend to the tattoo. It’s almost impossible to fathom otherwise.

Josh: So what’s your recommendation to your studio and production company clients.

Scott: If an actor’s tattoo is going to be seen on camera, make the actor get a release…one that we prepare…from the tattoo artist. Sometimes this could be impossible, in which case production may need to consider covering up the tattoo with makeup or clothing.

Josh: And how do you deal with content that’s already done and out in the marketplace?

Scott: Be the first to file a declaratory relief action in the southern district of New York.

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