Although FanGraphs is very much a baseball site, we’ve occasionally paid homage to arguably the greatest basketball player of all time, Lebron James. (My favorite was this piece by the inimitable Jeff Sullivan trying to design a 23-WAR baseball player.) Every so often, LeBron does something which forces us to ask questions — questions that might also be relevant to baseball — and then we have to cover it. Something like that is happening now, in a lawsuit about tattoos and video games.
LeBron has some awesome ink. It’s a part of his brand, and so back in 2015, those tattoos were included in the computerized depiction of LeBron created for the NBA2K video game. The game also included tattoos on the bodies of Eric Bledsoe, Kobe Bryant, DeAndre Jordan, and Kenyon Martin (among others). Ordinarily that wouldn’t have been a big deal, except that it led to a lawsuit being filed by Solid Oak Sketches, LLC, against the video-game makers, for copyright infringement. Solid Oak Sketches has an exclusive licensing agreement with the tattoo artists, which means that Solid Oak owns the exclusive right to market, sell, and otherwise control the copyrights to the tattoos in question. In the summary judgment briefing in Solid Oak’s case, LeBron provided an affidavit which said, inter alia, this:
In the fifteen years since I’ve been playing professional basketball, this case is the first time that anyone has suggested to me that I can’t license my likeness without getting the permission of the tattooists who inked my tattoos. No tattooist has ever told me I needed their permission to be shown with my tattoos, even when it was clear I was a public basketball player.
You can already recognize how this might have some relevance to major leaguers. Javier Baez, Matt Kemp, Jose Ramirez, Ryan Roberts, and Gary Sanchez (among many others) have all been known, at one time or another, for their tattoos. If a baseball video game includes them in its depictions of the players, is that copyright infringement? Is showing them on a nationally televised baseball game copyright infringement?
Surprisingly enough, the question of whether a tattoo can be copyrighted is actually a new frontier in intellectual property law. Although there’s a consensus that tattoo stencils and designs can be copyrighted, so far there’s been no one rule on how to handle copyright litigation concerning the tattoo itself once applied.
This has led to some really interesting cases. For instance, in Minnifield v. Ashcraft, the defendant, a tattoo artist, took a picture of a tattoo he had completed on plaintiff’s breast for his portfolio. When he posted it online, she sued him for infringement of her right of publicity. He responded that he owned the tattoo copyright and therefore couldn’t have infringed on her right of publicity. The Alabama Court of Civil Appeals looked at the case, threw its collective hands up, and after several pages of back-and-forth, let the case go forward by deciding that plaintiff’s claim “is based on Ashcraft’s publication of photographs,” not the ownership of the tattoo. A few other cases have been brought by tattoo artists, most notably one suit filed by Mike Tyson’s tattoo artist against a movie studio for using Tyson’s distinctive face tattoo on a character in the movie. But none have gone to trial, so courts really haven’t yet weighed in one way or another.
So let’s start at the beginning: how can a computerized reproduction of a tattoo even lead to copyright infringement in the first place? That part is actually pretty simple. According to 17 U.S.C. 102 of the Copyright Act,
Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.
In other words, you can copyright anything original which is “fixed in a tangible medium” – that is, “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” So, if you create an original musical piece and play it one time by air guitar, you can’t copyright it because there’s no tangible medium to hold it. If you write an original musical piece and save it to an .mp3 file, however, then you can copyright it. As law professor Benjamin Keele explains, the tangible medium part is important. I could not copyright this article if I gave it to you as a speech without ever writing it down or recording it. But by writing it down, I record it — that is, I fix it in a tangible medium. A tangible medium can be a computer file, paper, sand, a baseball bat, or a shoe.
But is skin a tangible medium? As Jessica Santiago wrote in an excellent paper published by the Pennsylvania Bar Association, the answer is “maybe.” The only judge to decide the issue, in Mike Tyson’s case, literally said on the matter only that “of course tattoos are copyrightable,” but she provided no analysis or basis whatsoever for that holding, which leaves the rest of us in the dark. Given that tattoos are generally indelible and skin is, at least theoretically, a tangible medium, I personally think tattoos are, in theory, copyrightable. But it’s currently an open question.
Perhaps understandably, that’s not the argument that the video-game manufacturers are taking on Solid Oak’s case. They’re instead arguing in their motion for summary judgment that reproducing the tattoos in a manner incidental to the tattoos themselves (i.e., as part of a realistic depiction of the player) is a protected fair use. In essence, the game makers argue that they aren’t using the tattoos to sell anything, and they aren’t reproducing the tattoos in order to provide a substitute for the tattoos themselves.
Consider this passage from saying” rel=”noopener” target=”_blank”>their defense:
In conducting this analysis, it cannot be overemphasized that Solid Oak admits that “NBA2K is not a substitute for the TATTOOS.” Defs.’ SUF ¶ 67. This admission is critical as the Second Circuit has held that fair use exists where the parties’ works are not substitutes for each other. See Authors Guild v. Google, Inc., 804 F.3d 202, 214 (2d Cir. 2015) (fair use where use does not “serve as a substitute for the original or its plausible derivatives, shrinking the protected market opportunities of the copyrighted work”).
This is a really important point. Another important point is that Solid Oak had no involvement with the creation of the tattoos themselves. Its owner is its sole employee, and he’s not a tattoo artist. The tattoo artists themselves seem to be largely opposed to Solid Oak’s suit, with one of the artists, Thomas Ray Cornett, saying in his affidavit that “[t]he position Solid Oak has taken is completely inconsistent with how I feel my work should be used, and quite candidly, I feel that Solid Oak’s claims are ridiculous.” And there’s also the impact the suit could have on the tattoo industry as a whole, as the game-makers argue; Cornett adds in his affidavit that
it would hurt the tattoo industry and deter people from using tattoos as a way of expressing themselves if anyone thought that if he or she ever became successful or wanted to be displayed in any sort of media or advertising, they would be prevented from doing so without the tattooist’s permission.
That’s probably true. And Solid Oak has suffered some setbacks so far, with the court already ruling that it can’t recover for damages suffered before it registered its copyrights. But on the other hand, some courts (albeit in different contexts) have taken a very different approach, with one calling Dwayne Johnson’s tattoos “trade dress.” Of course, that also raises the question of how tattoos can be trade dress belonging to the wearer if they belong also to the artist.
Regardless of the outcome of this case, it’s going to have ripple effects throughout the sports world. If Solid Oak wins, that means video games, sports telecasts, ESPN’s body issue, and game programs could all be impacted. On the other hand, if the game-maker wins, that could mean tattoo artists have limited rights over the reproduction of their art, and that doesn’t seem right either. The court could also punt the issue, by accepting without deciding that the tattoos are copyrightable, then holding any violation de minimis given how small the tattoos are on screen, and limit its holding to these facts. But this may very well be the most important IP law case to follow over the next six months, at least so far as baseball is concerned.
Sheryl Ring is a litigation attorney and General Counsel at Open Communities, a non-profit legal aid agency in the Chicago suburbs. You can reach her on twitter at @Ring_Sheryl. The opinions expressed here are solely the author's. This post is intended for informational purposes only and is not intended as legal advice.