Do tattoos on NBA players’ bodies in a videogame infringe on a copyright owned by an exclusive licensee of the tattoos? Judge Laura Taylor Swain of the Southern District of New York says no. 

Plaintiff, Solid Oak Sketches (“Solid Oak”), is the exclusive licensee of five tattoos copyrighted by tattoo artists. Solid Oak Sketches, LLC v. 2K Games, Inc., 449 F.Supp.3d 333, 340 (S.D.N.Y. 2020). The artists had inked the tattoos on three NBA players: Eric Bledsoe, Lebron James, and Kenyon Martin. These players were later featured in a video game series created by 2K Games (“2K”) and Take-Two Interactive Software (“Take-Two”). See id. The videogame, NBA 2K, depicts the players with tattoos intact. Neither 2K nor Take-Two sought a license for the use of the tattoos from either the artists or from Solid Oak. See id.

Solid Oak brought a claim of copyright infringement against 2K and Take-Two on the basis that the defendants did not acquire a license for the tattoos to be used in the game. After some procedural back and forth, 2K and Take Two moved for summary judgement, requesting an order to dismiss Solid Oak’s copyright infringement claim and an entry of declaratory judgement in their favor on their de minimis use and fair use counterclaims. The court granted the defendants’ motion.

Copyright Infringement

First, Judge Swain dismissed Solid Oak’s copyright infringement claim, finding that the defendant’s use of the tattoos was de minimis. 

A copyright infringement claim is established when a plaintiff with a valid copyright demonstrates 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 protectible elements of plaintiff’s [work].” Id. at 343-44. In order to make a determination of substantial similarity, the “amount copied must be more than de minimis.” Id. at 344. A finding of de minimis use requires the alleged infringer to “demonstrate that the copying of the protected material is so trivial as to fall below the quantitative threshold of substantial similarity.” Id. The quantitative threshold is determined by looking at, among other things, length of time in which the work is used, the amount of the work that is copied, and the observability of the copied work. Id.

Here, Judge Swain found that “no reasonable trier of fact could find the tattoos . . . to be substantially similar to the tattoo designs licensed to Solid Oak.” Id. at 345. She noted that the display of the tattoos was “small and indistinct, appearing as rapidly moving visual features of rapidly moving figures in groups of player figures,” and that when they did appear during gameplay, they could not be “identified or observed” or appeared “entirely out-of-focus.” Id.

Judge Swain also found that the defendants had an implied license to use the tattoos in the game as part of the Players’ likeness. While she acknowledged that the Second Circuit had not ruled specifically on when an implied non-exclusive license can be found, courts in the Circuit had found an implied non-exclusive license to exist when “one party creates a work at the other’s request and hand[s] it over, intending that the other copy and distribute it.” Id. at 346. Here, Judge Swain pointed to declarations made by the tattoo artists indicating they were aware and intended for the players to copy and distribute the tattoos as elements of the likenesses, knowing that they would likely appear in public and in the media with these images on their bodies. See id.Therefore, when the Players gave the NBA the right to license their likenesses to third parties such as Take-Two, they were also granting them the license to include the tattoos in their likenesses. These implied licenses also predated the exclusive licenses obtained by Solid Oak from the tattoo artists. See id.

Fair Use

Despite a finding of no infringement, Judge Swain proceeded to show that Solid Oak would have failed in their claim under fair use doctrine. Fair use is determined through a four-factor analysis: (1) the purpose and character of the use, (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. 347. 

First, she found defendants’ purpose and character of use to be highly transformative. Id. at 347-48. She emphasized the tattoos’ reduced size and inconsequential role in the video game. Id

Second, she found the nature of the copyrighted works to also weigh in favor of fair use, as the works were “factual,” and had previously been published. Id. at 348-49. Judge Swain saw the tattoos’ renderings of “common objects and motifs” and depiction of “another factual work” (a baby picture) as indicating factual works with no “particular creative or expressive features.” Id.

Regarding the third requirement, the court acknowledged that the tattoos were copied in their entirety. Id. at 349. However, the court saw this copying as necessary for the purpose of transformative use as it “would have made little sense for Defendants to copy just half or some smaller portion of the Tattoos, as it would not have served to depict realistically the Players’ likenesses.” Id. Therefore, Judge Swain said, this factor does not weigh against fair use. Id. at 349. This conclusion may be debatable because she used the first factor, which found transformative purpose and use, to influence her analysis of the third factor. Her process demonstrates how some courts liberally use “transformative use,” which applies to the first factor, in their analysis of the other three factors. 

Finally, Judge Swain said the fourth factor showed no market effect, determining that the “tattoos as featured in the video game cannot serve as substitutes for use of the Tattoo designs in any other medium” and therefore could not deprive Solid Oak of significant revenues because “potential purchasers of the Tattoo designs are unlikely to opt to acquire the copy in preference to the original.” Id. at 349-50. In discussing the potential market for licensing tattoos in video games, she noted that the court could only consider the impact on potential licensing for “traditional, reasonable or likely to be developed markets,” and determined that Solid Oak’s “hypothetical market for licensing tattoos in video games . . . does not satisfy this standard,” pointing to “uncontroverted evidence” provided by 2K and Take-Two that this market is unlikely to develop. Id. at 350.

Solid Oak Sketches is a win for video game companies and athletes, and a loss for tattoo artists and their exclusive licensees. 

Fordham IP Institute