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Tattoo Copyright Claim Results in Summary Judgment for Game Developer

By Jeff Hermes

At the end of March, Judge Laura Taylor Swain of the U.S. District Court for the Southern District of New York issued a memorandum decision and order in the case of Solid Oak Sketches, LLC v. 2K Games, Inc. (S.D.N.Y. Mar. 26, 2020). The case involved a copyright claim asserted by an alleged exclusive licensee of the copyrights in five tattoos against the developers of a videogame series in which the pro athletes bearing those tattoos were depicted.

On the defendants' motion for summary judgment, the court held that plaintiff's copyright claim failed as a matter of law and that defendants were entitled to declaratory judgments that their use of the tattoos was (1) de minimis and (2) fair use.

Factual Background

2K Games and its parent Take-Two Interactive Software (collectively, "2K Games") are the developers and publishers of the popular "NBA 2K" series of video games. The NBA 2K series, which is updated annually, strives to provide as realistic a simulation of actual National Basketball Association game play as possible. This includes detailed depictions of actual athletes.

At issue in this case were the 2K14, 2K15, and 2K16 editions of the game, which included real-life NBA players Eric Bledsoe, LeBron James, and Kenyon Martin (the "Players"). Each of the Players bore one or more of the five tattoos which are at issue in this case (the "Tattoos").

The district court found the following facts regarding the Tattoos and their appearance in the NBA 2K series to be undisputed:

  • "The Tattoos reflect the Players' personal expression." Slip op. at 3.
  • The Artists intended the Tattoos to become essential parts of the Players' likenesses. Id. at 4-6.
  • "NBA 2K users do not see the Tattoos clearly, if at all, during gameplay." Id. at 7.
  • "The Tattoos comprise only a miniscule proportion of the video game data[.]" Id.
  • "When a Tattooed player is selected, the Tattoos are depicted on a computer or television screen at about 4.4% to 10.96% of the size that they appear in real life[.]" Id.
  • "The Tattoos are subordinated to the display of the court and the players in competition." Id. (internal quotation marks omitted).
  • "The NBA 2K game covers do not depict the Players or their tattoos, and the advertising materials neither depicted nor discussed the Tattoos." Id. at 8.

At some point after the Tattoos were applied to the Players but before the publication of the editions of the NBA 2K series at issue, the artists who applied them (the "Artists") granted an exclusive license in the Tattoos to plaintiff Solid Oak Sketches ("Solid Oak"). The court determined the following undisputed facts regarding Solid Oak and the licensing of the Tattoos and the Players' likenesses.

  • "Solid Oak is not licensed to apply the tattoos to a person's skin, and Solid Oak does not hold any publicity or trademark rights to the Players' likenesses." Id. at 3.
  • "The Players have given the NBA the right to license their likenesses to third parties, and the NBA has granted such a license to Take-Two." Id. (internal brackets and quotation marks omitted).
  • "Solid Oak has not profited from licensing the Tattoos. ... Solid Oak has never created a video game that depicts the Tattoos, nor has Solid Oak licensed the Tattoos for use in a video game." Id. at 8.
  • "[T]here is no demand for licensing the Tattoos for use in a video game." Id. at 9.
  • "Solid Oak has neither licensed the Tattoo designs nor sold merchandise depicting the Tattoos." Id.

Solid Oak's owner agreed that he would need a license for the Players' publicity rights to sell apparel bearing the Tattoos, but offered no evidence that he had a prospect of obtaining those rights. Id. at 9.

Solid Oak sued 2K Games for a single count of copyright infringement based on the appearance of the Tattoos in the NBA 2K series' depiction of the Players. But as you, dear readers, can no doubt already detect from the facts above, this isn't going to go Solid Oak's way.

The Copyright Analysis

The district court breaks up its copyright analysis into three sections: de minimis use, the existence of an implied license, and fair use. All three analyses come out in 2K Games' favor.

De minimis use

In the Second Circuit, the court stated, the issue of de minimis use relates to the question of whether a plaintiff can show substantial similarity between the defendant's work and the protectible elements of the plaintiff's work. "To establish that the infringement of a copyright is de minimis, and therefore not actionable, the alleged infringer must demonstrate that the copying of the protected material is so trivial 'as to fall below the quantitative threshold of substantial similarity[.]'" Slip op. at 11, quoting Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217 (2nd Cir. 1998). "Fundamental" to this determination, said the court, is the "[o]bservability of the copyrighted work in the allegedly infringing work" to an "average lay observer." Id. (internal quotation marks omitted).

Here, Solid Oak argued that a user of the NBA 2K games (I'm going to say "user" rather than player, to avoid confusion with the athlete Players) could take advantage of the video game's features to select one of the Players to appear in the game and to focus the game's point of view in such a way as to make the Tattoos prominent on the user's screen. Id. at 12. However, the court found that the undisputed record established that "average game play is unlikely to include the players with the Tattoos and that, even when such players are included, the display of the Tattoos is small and indistinct, appearing as rapidly moving visual features of rapidly moving figures in groups of player figures." Id. at 13. It further found that Plaintiff had not offered any evidence that the NBA 2K games use the game's features to make the Tattoos more prominent. Id. at 14. Accordingly, the court held that no reasonable fact finder could determine that 2K Games' use was substantially similar to the Plaintiff's works, dismissing the copyright claim and granting 2K Games a declaratory judgment to that effect. Id.

Before we move on, there is a slight disconnect in the court's discussion that is worth noting, though it likely would not affect the outcome of the case. Specifically, Solid Oak argued that the game's users could elect to use the game's camera functions to zero in on the Tattoos, while the court found that Solid Oak had not shown that the NBA 2K games "employed the broad range of the video game's features" to do this. Compare slip op. at 12 with id. at 14. But the games do not "employ the features," the users do, and it is not clear whether the court is saying that the game cannot do what Solid Oak says or just that 2K Games did not intend for users to use the game's features in that way.

If the latter, there's an interesting issue here about how to measure de minimis use in a video game or other interactive environment, namely: Does the fact that the "average" user won't zero in on the Tattoos matter, if the game provides the tools to allow any given user to do so if they wish? There might be no actual damage, and other defenses such as fair use might apply, but it seems strange to say that there is no substantial similarity if a high-resolution image is actually available to the user. That strikes me as similar to saying there's no substantial similarity if I show a copyrighted film without a license at my drive-in theater because most people only get a fleeting glimpse of the screen from the highway; maybe there are other defenses, but I question whether "observability" in this context should depend on whether the "average lay observer" makes the choice to take the next exit and pull up in front of my screen.

That said, perhaps Solid Oak was wrong, and it isn't actually possible for a user to choose to see the Tattoos in detail. Moreover, maybe this issue gets resolved with a slight detour through an intentional/volitional conduct analysis focused on what 2K Games could reasonably expect the "average" user to do. In any event, the issue is likely moot in the face of the court's treatment of 2K Games' other defenses, but it would have been nice if the court had connected these dots a little more clearly.

Implied License

In addition to its "de minimis" argument, 2K Games argued that it held an implied license to use the Tattoos whose origin predated the grant of an exclusive license to Solid Oak and to which Solid Oak's license was therefore subject. Specifically, it argued that: (1) the Artists conveyed an implied license to the Players to use the Tattoos as part of their likenesses; (2) the Players licensed their publicity rights to the NBA, including the right to sublicense their likenesses to third parties; and (3) the NBA granted such a license to the defendants.

Solid Oak, on the other hand, argued that the Artists' understanding that the Tattoos would merge with the Players' likenesses had nothing to do with copyright protection, and that any implied license needed to be spelled out as a limitation on Solid Oak's own subsequent exclusive license.

The court again sided with 2K Games, holding that the circumstances of the Tattoos' creation necessarily resulted in nonexclusive licenses to the Players. Slip op. at 15. In the Second Circuit, the court held, an implied license may be found "where one party created a work at the other's request and handed it over, intending that the other copy and distribute it." Id. And in this case, undisputed declarations submitted by the Artists stated that the Tattoos were created at the Players' request and were "delivered" through the inscription of the Tattoos on the Players. Id. In addition, the Artists intended that the Tattoos would be copied and distributed by the Players as elements of their likenesses and knew that the Players were likely to appear "in public, on television, in commercials, or in other forms of media." Id. Finally, the Players were never asked to limit the display of the Tattoos. Id.

Thus, the court found that the Players could license others to use the Tattoos as part of their likenesses and that the Players' licenses predated Solid Oak's license. Id. 2K Games' license derived from the Players' license, and thus it was entitled to summary judgment in its favor for that reason as well. Id.

The court did not discuss Solid Oak's protest that its so-called "exclusive license" said nothing about the prior implied licenses. As far as the case against 2K Games goes, this makes some sense. One could imagine a claim against a party granting a purportedly exclusive license for a failure to disclose existing licenses, but certainly Solid Oak would have been aware of the circumstances giving rise to the implied licenses in this case. And as far as the claim against 2K Games goes, there is no suggestion that 2K Games had knowledge of Solid Oak's license at the time that 2K Games exercised its rights derived from the implied licenses. Thus, there would be no reason for 2K Games to understand that the Artists had intended the grant of the exclusive license to revoke the implied licenses. Moreover, that presumes that the implied licenses were in fact revocable; it is logical that permanent tattoos would be subject to an irrevocable license.

The court also did not get into a discussion of the interaction between copyright law and rights of publicity with respect to artwork that is part of someone's likeness. Again, however, there was probably no need to do so. The Artists intended that the Players have control over the display of the tattoos; whether as works of art under copyright law or as elements of their likeness under rights of publicity, the end result is the same. It would be interesting, however, to consider the further question of whether artwork that becomes literally inseparable from a person's likeness might merge into that person's right of publicity such that the artist's rights are extinguished with respect to that instance of the work. Put another way: If one of the Artists had, after inking, claimed to have revoked the implied license and tried to place limitations on the Player's public display of a Tattoo, would such limitations be enforceable? These will be questions for another case.

Fair Use

Although not necessary to dispose of the plaintiff's copyright claim, the court proceeded to discuss 2K Games' counterclaim for a declaratory judgment that its use of the Tattoos was fair. The court proceeded through the standard four-factor test.

Purpose and Character of the Use: The original purpose of the Tattoos was "as a means for the Players to express themselves through body art"; 2K Games' use was intended to aid "general recognizability of game figures as depictions of the Players." Slip op. at 17. Thus, 2K Games' use of the Tattoos was transformative. Id. Furthermore, the game reduced the size of the Tattoos inasmuch as the Players were depicted at reduced size, the Tattoos were "infrequently and only imprecisely observable and are combined with myriad other auditory and visual elements," and the Tattoos constituted a trivial portion of the game's data. Id. at 18. And despite the fact that the NBA 2K series and thus 2K Games' use of the Tattoos were commercial in nature, the Tattoos were "merely incidental" to the commercial value of the game. Id. at 19.

The court's analysis on this factor raises some of the same questions as the "de minimis" discussion above, specifically with respect to the court's findings regarding the observability of the Tattoos. In this context, though, it seems more appropriate to ask whether the average user would observe the Tattoos with any degree of clarity, because this factor relates to the overall nature of the use rather than substantial similarity. I would add here, though, that the court also seems to be confusing size with resolution: The size of the Players is dependent on the dimensions of a user's screen and how the viewpoint of the user zooms in, but the resolution of the tattoo graphics determines whether they are clear or blurry when enlarged. In any event, the court's points about the transformative nature of the use and the irrelevance of the commerciality of the NBA 2K series seem right to me.

Nature of the Copyrighted Work: The court found that the Tattoos had been previously "published," such that they were not subject to the reduced scope of fair use for unpublished works. Slip op. at 19. The court also found that the Tattoo designs were "more factual than expressive because they are each based on another factual work [e.g., a photo of LeBron James' son] or comprise representational renderings of common objects and motifs that are frequently found in tattoos." Id. I'm not sure that the use of common motifs makes a copyrighted work "factual," but the Artists did acknowledge that they were copying others' designs and pictures in generating the Tattoos, which at least suggests that their interests are thin.

Amount and Substantiality of the Use: Although the Tattoos were copied in their entirety, the court held that this was not determinative because it was necessary for 2K Games to use the whole image to accomplish its transformative purpose (as discussed under Factor One). Slip op. at 20-21. The court also pointed to its findings that the Tattoos were reduced in size and not recognizable. Id. at 21.

Effect on the Market: On the one hand, the Tattoos in the video game would not substitute for the appearance of the Tattoos in any other medium. Slip op. at 22. On the other hand, Solid Oak's hypothetical licensing market for the Tattoos in videogames is unlikely to develop and would depend on Solid Oak's obtaining publicity rights licenses from the Players that it does not have. Id. Thus, the parties' respective markets do not overlap and the effects on the plaintiff's market is minimal. Id. at 23.

In sum, the court ruled that all of the factors weighed in favor of 2K Games and granted a declaratory judgment that its use of the Tattoos is fair.

Expert Testimony

Much of the evidence that the court found relevant in the analysis above derived from the testimony of four expert witnesses:

  • a survey expert who analyzed why people buy the NBA 2K series games and opined that the Tattoos played no role in the demand for the game;
  • a professor of anthropology who opined on the nature of tattoos as personal expression, customs and norms in the tattoo industry, and the unlikelihood of a market for licensing tattoos;
  • a professor of interactive computing who analyzed the features of the NBA 2K series and the role of the tattoos in the games, and opined that it would not be reasonable to license the fleeting use of images such as the Tattoos; and
  • an expert on the valuation of intellectual property who opined that none of the profits of the NBA 2K series were attributable to the appearance of the Tattoos, and that no market for licensing tattoo artwork is likely to develop.

Solid Oak moved to strike these experts' testimony, but (as illustrated in the discussion above) the court found their opinions relevant to its analysis; the court also found the experts qualified to offer these opinions. Therefore, the court denied Solid Oak's motion. Slip op. at 23-29.

Conclusion

This was a virtually complete win for 2K Games, with the minor exception of a separate counterclaim related to a flaw in the registration for one of the Tattoos that remained unresolved. While the court might have glossed over certain points, its fundamental analysis was strong and should give pause to those pursuing similar claims in this or other courts.

Jeff Hermes is a Deputy Director of MLRC.

 
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