In Solid Oak Sketches, LLC v. 2K Games, Inc. (2020), the plaintiff, a licensing company for athletes and entertainers, brought a copyright infringement claim against 2K Games for depicting lifelike images of National Basketball Association (NBA) basketball players and their tattoos. Five tattoos were depicted on NBA players Eric Bledsoe, LeBron James, and Kenyon Martin in three annual versions of the NBA 2K game. The plaintiff claimed these depictions constituted an infringement of the tattoo designs and copyrights owned by the tattoo artists. 2K Games raised three main defenses: first, that the plaintiff could not establish substantial similarity of the depictions to the designs because the use of the tattoos was de minimis; second, that the copyright infringement claim failed because 2K Games held an implied license to feature the tattoos as part of the players’ likeness; and third, that use of the tattoos in the NBA 2K games constituted “fair use.” The U.S. District Court for the Southern District of New York granted summary judgment in favor of 2K Games on all three defenses.
In its ruling that “no reasonable trier of fact could find the Tattoos as they appear in NBA 2K to be substantially similar to the Tattoo designs licensed to Solid Oak,” the court found it significant that the tattoos appeared on only three of over 400 players available to choose from on the 2K game and that the average gameplay would not likely include these three players. It also found that the tattoos depicted were small and indistinct and could not be identified or observed when viewed on rapidly moving figures in groups of player figures. Based on these findings, the court held the use of the tattoos to be de minimis.
The court also found the copyright infringement claims failed because 2K Games was authorized to use the tattoos under an implied license. The factual record established that the three players each requested the creation of the tattoos, the tattoo artists created and delivered the designs to the players by inking them onto their skin, and the tattoo artists intended the tattoos to become a part of the players’ image and likeness knowing they would appear in public, on television, in commercials, and in other forms of media like the video games. Because a copyright owner who grants a nonexclusive license to use his copyrighted material waives his right to sue for infringement, the court held that by granting the players an implied license to use the tattoos as part of their likeness, Solid Oak could not sue for infringement.
In considering the “fair use” defense of the tattoos, the court engaged in a multifactor analysis. It found 2K Games’ use of the tattoos to be transformative because the display of the tattoos on the 2K game had a different purpose from the purpose for which the tattoos were originally designed. Originally, the tattoos were designed for the purpose of the players’ self-expression. The purpose of the use in the 2K game was to depict the players’ images accurately. It was also significant to the court’s finding of “fair use” that the size of the tattoos in the 2K games was significantly reduced and that the tattoos were infrequently observable and were an inconsequential part of the game given only three of over 400 players were depicted with tattoos.
What was significant about the Solid Oak case was that it was decided on summary judgment as a matter of law. However, in two other cases in which tattoo artists asserted similar copyright infringement claims against video game developers that, in turn, raised the same defenses that were raised in Solid Oak, the courts denied summary judgment based on issues of fact and sent the cases to trial before a jury.
In Alexander v. Take-Two Interactive Software, Inc. (2020), a former tattoo artist who inked tattoos on WWE professional wrestler Randy Orton sued the creators of the WWE 2K series of video games for copyright infringement for reproducing the tattoos digitally in the video games. The U.S. District Court for the Southern District of Illinois first granted summary judgment in favor of the plaintiff, finding that the defendants had copied the tattoo designs. It then denied summary judgment on the defendant’s affirmative defenses of implied license, fair use, and de minimis use, finding issues of fact. The case was tried solely on the affirmative defense of fair use. The jury returned a verdict rejecting the affirmative defense, awarding the plaintiff $3,750 in actual losses and awarding zero dollars for profits attributable to the use of the tattoos.
In Hayden v. 2K Games, Inc. (2022), a tattoo artist filed suit against the same video game developer defendants in the Solid Oak case, alleging copyright infringement for depictions of tattoos he designed and inked on NBA players Lebron James, Danny Green, and Tristan Thompson. The case involved different tattoos on LeBron James and different annual versions of the NBA 2K games from those at issue in Solid Oak. The 2K Games defendants used the same lawyers who defended them in Solid Oak and asserted the same affirmative defenses and arguments they successfully raised on summary judgment in Solid Oak. However, the U.S. District Court for the Northern District of Ohio reached a different result, denying summary judgment to the 2K Game defendants based on factual issues and sending the case to trial. The verdict form asked whether the defendants proved their defenses of implied license (the first defense listed), waiver, de minimis use, and fair use. The jury found in favor of the defendants on the implied license defense and did not need to reach a verdict on the other defenses.
These three cases, raising the same copyright claims and affirmative defenses, were all treated differently with varying results. In Solid Oak, the court granted summary judgment on the affirmative defenses of implied license, de minimis use, and fair use as a matter of law. In both Alexander and Hayden, the courts denied summary judgment finding issues of fact on the same affirmative defenses. Granted, the facts were a bit different in each case, but not significantly. In the two cases that went to trial, the juries came to different conclusions, with one rendering only a modest award in favor of the tattoo artist and a defense verdict for the video game developers in the other.
Given these different approaches and outcomes, it is evident this area of copyright infringement law is in a state of flux and could use further development. However, that confusion may not soon be resolved. Because no tattoo artist has yet received a significant monetary award based on actual losses or alleged profits attributable to the video game developers’ use of the copyrighted tattoos, the incentive for tattoo artists to bring these complex claims may be diminished. This fact alone may deter further development of this area of the law. But it is worth watching how similar new cases, if any, will be adjudicated and what outcomes may result.