The recent decision on Hayden vs. 2K Games is a big win for video game publishers.  Dive into the fascinating world of copyright disputes over tattoos in video games. Scott Hervey and Jamie Lincenberg from Weintraub Tobin discuss how this case compares to past decisions and what it means for athletes, celebrities, and the video game industry on the latest episode of “The Briefing”

Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.

Show Notes:

Scott Two years ago, I took the position that the District Court for the Southern District of Illinois and the Court of Appeals in the case of Alexander versus Take2 Interactive Software got it completely wrong when they found that the depiction of tattoos on wrestler Randy Orton in a video game published by Take2 Interactive infringed the tattoo artist’s copyright in the tattoos. I said that both the court’s rejection of Take-Two’s defenses, defenses that won the day in the US District Court for the Southern District of New York in Solid Oak Sketches versus 2K Games was absolutely incorrect. Now, we have the US District Court for the Northern District of Ohio deciding another copyright dispute over an inked athlete depicted in a take two interactive video game, and this court got it right. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by frequent Briefing contributor, Jamie Lincenberg, and we’re going to talk about this case, Hayden versus 2K Games, Inc, on this next installment of “The Briefing.” Jamie, welcome back to the briefing.

Thanks, Scott. It’s good to be here again.

So, let’s dive right into this case because these tattoo lawsuits, I find them interesting. Well, this one decision that I previously noted, the Alexander case, really got under my skin. But let’s talk about this one first. The result in Hayden versus 2K Games was a jury verdict. The jury found that 2K Games enjoyed an implied license to incorporate a depiction of certain tattoos on LeBron James and that the depiction, as depicted on a video game character, did not violate the copyright of Hayden, who was the tattoo artist that created these tattoos. This was the same result that the court reached in Solid Oak Sketches versus Take-Two Interactive.

Yes, that case also involved LeBron James’ tattoos and the NBA 2K video game.

That’s right. Solid Oak was a licensing firm that represented or represents, probably still, the go-to tattoo artist for NBA players. And Solid Oak Sketches sued Take-Two Interactive Software, the game publisher behind the popular NBA 2K basketball video game. And Solid Oak Sketches alleged that the game maker’s depiction of LeBron James and his tattoos, infringe the tattoo artist copyright in six tattoos. In ruling on the video game publisher’s motion for summary judgment, the court found that the publisher had an implied license to depict the tattoos in the video game. Now, an implied license exists where one party created work at the other party’s request and handed it over, intending that the other party copy and distribute or otherwise use it in the manner intended. The court in this case found that the players had an implied license to use the tattoos as elements of their likeness, and the defendants right to use the tattoos in depicting players in the video game derives from this implied license from the tattoo artist to the player. A crucial element of the court’s finding that the tattoo artist knew their subject was likely to appear in public, on television, in commercials, and in other forms of media.  That was a crucial element of the court’s finding in Solid Oak Sketches.

While we’ve only seen a copy of the verdict form, which noted a win for 2K Games based on an implied license, I do think it’s safe to assume that the reasoning was the same or similar to that in Solid Oaks.

Yeah, I would agree with you, Jamie. We have two video game cases, both finding an implied license, and then we have Alexander versus Take-Two, where an implied license isn’t found. Actually, where the jury instructions on an implied license were not given to the jury. There’s a factual wrinkle in that case on which the court hangs its holding, but I don’t know that that’s enough of a distinction to actually justify the results of the case. Let me talk about this case a little bit. Tattoo artist Katherine Alexander sued Take-Two and 2K Games in the US District Court for the Southern District of Illinois for depicting World wrestling entertainment wrestler Randy Orton in the video game WWE 2K. Alexander testified that she had never given permission to any of her clients to use copies of her tattoo works in video games and argued that the WWE and Take-Two conflated Orton’s rights to his own likeness and the right to appear in media with an implied license to use her copyrights in an unlimited and other commercial way, such as video games. In the ruling on the motion for summary judgment, the Alexander Court found that it wasn’t clear whether Alexander or Orton actually ever discussed whether and to what extent Orton had permission to copy and distribute the tattoos and whether any implied license would include sub-licensing rights and the Court denied summary judgment on the implied license affirmative defense.  

So after the Court’s ruling on the motions for judgment, the matter then went to trial. Apparently, shortly before trial, 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. There were also shortcomings in the court’s fair use instructions. So, it seems that the trial court didn’t get instructions on the affirmative defenses it should have, which led to a jury verdict for the tattoo artist in an amount just under $4,000.

Yeah, I think the results in the Alexander case are wrong for a number of reasons. First, I think that every tattoo artist who inks a musician, or a sports figure, or an artist understands that this public figure will be portrayed and depicted in many, many, many mediums: television, photography, animation, etc. Could you imagine if some tattoo artist, just before starting the work on LeBron James or any athlete or musician or artist, said, Oh, by the way, you can’t allow anyone to film or to pick this tattoo that I’m putting on your body. That’s going to last forever. I mean, it’s ridiculous, and most likely, I’m going to assume that the person would just get out of the chair and walk out of the tattoo parlor. For the court in Alexander not to allow the finder of fact to weigh the evidence related to whether this conversation ever happened was a huge mistake. But even crazier is the practical effect of this ruling. Essentially, according to, well, at least in Chicago, once someone gets a tattoo, that person loses 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 cover up the tattoo with makeup, which they very well may need to do after the Alexander ruling, or at least if the actor is from Chicago, or there might be jurisdiction in Chicago, the producer would need to get a release from the tattoo artist. What if the tattoo artist didn’t want to grant the release, and for some reason, the producer couldn’t cover up the tattoo? Does that mean that the actor may lose that job, possibly. This sounds a bit extreme, but it’s a logical extension from the Alexander decision, and that’s why I think the case is wrong.

Scott, what if the 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 posts a picture taken by a paparazzi without permission. But I have a very hard time with a tattoo artist suing a celebrity when the celebrity, say, takes a selfie that captures the tattoo on the celebrity’s arm.

Yeah, I agree. This Alexander decision, which, despite these two courts getting it correct, means that the person who has tattoos no longer has complete control and autonomy over their persona. They don’t control their right of publicity anymore, or at least in Chicago, in Illinois, they don’t. Because a person’s outward appearance is part of that person’s right of publicity, how is it reasonably understood that when a person gets a tattoo, that tattoo becomes in actually merge with that person’s likeness and that any rights a person has in exploiting their likeness would extend to that tattoo. How is it possible to then fathom that a tattoo artist would have a blocking right on this individual’s right to exploit their personal rights?

I’m curious: What’s your recommendation to your studio and production company clients based on this? I will say that I have seen in a lot of the brand endorsement deals that I work on that language has been added that your tattoo cannot be in the promotional content that you’re posting. Sometimes, as the talent reps, we push back on that. But I understand where the brands are coming from if this is really a concern that we might be facing.

Yeah, think about it. At least according to the Alexander Court, all the tattoo artist needs to say in order to get past the motion or summary judgment and drag a copyright infringement case all the way out is they just need to say, “Well, no, we never talked about an applied license.” Or, “No, I told him that he couldn’t show his arm in animation, cartoons, or video games.” That’s all that a tattoo artist would have to say. If an actor is going to be seen on camera, I guess at this point in time, given the Alexander case, the actor should get a release from the tattoo artist. Now, I mean, sometimes this could be impossible, in which case production might need to consider covering up the tattoo with makeup or clothing.

What about video games?

Right. I mean, that’s another thing because it’s a depiction of the artist. The point of a video game, you want video games to be fully immersive. You want them to be reflective of reality. I mean, could you imagine having LeBron James in a video game without any tattoos? That’s not the real LeBron James.

Yeah. How do you deal with content that’s already done and is out in the marketplace already?

Now, be the first to file a deck relief action in the Southern District of New York or in the Northern District of Ohio, and at all costs, avoid Illinois.

Scott, I was also thinking and for these celebrities who are constantly getting new tattoos, and maybe they have relationships with certain tattoo artists, where they live, or they fly out to LA or New York or wherever to get their tattoos; maybe it makes sense that they enter into work for hire agreements with their tattoo artist beforehand. Those agreements set out that the tattoos, the results, and the proceeds of the tattoo artist’s services are owned by the celebrity. They have the right to use the tattoos moving forward in any way that they see fit.

Look, I agree with you. I think that would be a smart idea. I think if you really want to be a customer-friendly tattoo parlor, maybe you have the forms already there that say, “We have no claim in the tattoo that we’re putting on your body, and you may fully use it.” I don’t know how many times a person goes to a tattoo artist fully prepared with a release or a work for higher acknowledgment or an assignment agreement. But I will say this seems to be not the norm. The vibe seems to be that most tattoo artists acknowledge that the tattoo on one’s body is an extension of their persona. And most tattoo artists really aren’t… They’re not making these claims. They’re not claiming copyright in any of the tattoos. But there’s always haters out there, and there’s always someone out there who’s going to try to game the system. It might behoove celebrities or athletes if they have a favorite tattoo artist to have that discussion with the tattoo artist, have them sign a piece of paper, and then you can go on your way and get it inked up.

It’s not an issue for the average Joe. I don’t think. I think it’s an issue for those celebrities who are making money off of their likeness and those tattoo artists are claiming a piece of their likenesses.

Yeah.  Well, I don’t have a tattoo. I know lots of people do, and I think it’s becoming more acceptable and definitely more common nowadays. It’s definitely an issue that will bubble up from time to time, again and again. Thanks for joining me today, Jamie.

Thanks, Scott. Thank you for joining us on this episode of The Briefing. We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about what we covered today, please leave us a comment.