By Robert B. Barnett Jr., J.D.
The court declared that the use of the tattoos in the video game was de minimis and fair use and, thus, did not infringe the tattooists’ copyrights.
In a claim by tattooists against video game developers alleging that the depictions of their tattoos on NBA players in a video game constituted copyright infringement, the developers were entitled to summary judgment because the tattoos, which cannot even be seen during play, constituted a de minimis use and because the tattooists gave the players an implied license to use the tattoos as part of their public images, a New York federal district court has ruled. In addition, the court granted the developers’ request for a declaration that the developers’ use of the tattoos in depicting video images of NBA players constituted fair use (Solid Oak Sketches, LLC v. 2K Games, Inc., March 26, 2020, Swain, L.).
Tattooists working at Solid Oak Sketches, LLC, provided five tattoos to three NBA players, LeBron James (three tattoos), Eric Bledsoe, and Kenyan Martin. Solid Oak obtained copyright protection for those tattoos after they were applied to the players. Meanwhile, Take-Two Interactive Software, Inc., is a developer of interactive entertainment and video through its two subsidiaries 2K and Rockstar Games. 2K releases an annual NBA game that includes lifelike depictions of NBA players. Solid Oak sued Take-Two and 2K Games, Inc., in New York federal court, alleging that the depiction of the tattoos on those three players in the 2K NBA video game violated its copyrights. In 2016, the court granted Take-Two’s motion to dismiss the claims for statutory damages and attorney fees. After Solid Oak amended its complaint, Take-Two and 2K filed counterclaims under the Copyright Act and the Declaratory Judgment Act seeking a declaratory judgment that they committed no copyright infringement. The court denied Take-Two and 2K’s motion for judgment on the pleadings. After discovery, Take-Two and 2K filed a motion for summary judgment.
De minimis copying. Take-Two and 2K’s first argument was that Solid Oak could not establish a substantial similarity with the original tattoos because the depictions in the video game constituted a de minimis use. The court concluded that no jury could possibly find that the NBA 2K tattoos were substantially similar to the original tattoo designs. The tattooed players are but three of 400 available players. When one of the three players is selected on a team, the player appears on the screen with the tattoos. At this point, the tattoos appear at between 4.4% to 10.96% of their original size because the players on the screen are so much smaller than the players in real life. Once play begins, the tattoos are not visible at all because of the "quick and erratic movements up and down the basketball court." Otherwise, when the players are not moving, the tattoos appear out of focus and can be seen only as dark shadings on the players’ arms. As a result, the court said, Take-Two and 2K were entitled to summary judgment on the basis of de minimis use.
Implied license. Take-Two and 2K’s second argument was that the copyright infringement claim should fail because they were authorized to use the tattoos in NBA 2K. The court agreed. The factual record, the court said, "clearly supports the reasonable inference that the tattooists necessarily granted the Players nonexclusive licenses to use the Tattoos as part of their likenesses." Furthermore, they granted that implied license before Solid Oak obtained copyright protection. The players then gave the NBA the right to license their likenesses to third-parties, which the NBA did when it licensed the likenesses to Take-Two. Take-Two and 2K, therefore, as proper license holders of the NBA likenesses, had the right to use those depictions in the video game. Take-Two and 2K were thus also entitled to summary judgment on the copyright infringement claim.
Fair use. Take-Two and 2K also sought a declaration that their use of the tattoos in NBA 2K was fair use. The Copyright Act has established four considerations in determining fair use: (1) the purpose and character of the use, including commercial use, (2) the nature of the copyrighted work, (3) the amount of substantiality of the portion used, and (4) the effect of the use upon the market (17 U.S.C. §107). As for purpose and character, the court concluded that 2K’s use of the tattoos was "transformative" because its purpose in displaying the tattoos—to accurately depict the players—was different from the original purpose—to express oneself through body art. The video depiction also significantly reduced the size of the tattoo. Third, the tattoos’ expressive value was minimized in the video game because they were only infrequently observable. Fourth, the tattoos constituted an inconsequential portion of the game. By one measure, they constituted only 0.000286% to 0.000431% of the total game data. No consumer bought NBA 2K because of the tattoos. Thus, the first factor, the purpose and character of the use, weighed in favor of fair use.
The second factor, the nature of the copyrighted work, also weighed in favor of fair use. The tattoos that were used on the players were previously published, in tattoo books for customers to look through. In fact, none of the tattoos were based on unique or expressive features. One was a picture of LeBron James’ son. The others used common motifs or were copied from other designs they did not create. Thus, these tattoos were insufficiently expressive or creative to defeat a finding of fair use. The third factor also weighed in favor of fair use because the severe reduction in size of the tattoos significantly limited their visual impact. The fourth factor, the impact on the market, weighed in favor of fair use because no one could assume that a depiction of the tattoos in NBA 2K would cause potential tattoo purchasers to buy the game rather than the tattoo. Given that all four factors favored a finding of fair use, the court concluded that depictions of the tattoos in the video game constituted fair use.
The court, therefore, granted Take-Two and 2K’s motion for summary judgment on both de minimis and implied licensing grounds. The complaint was dismissed in its entirety. The court also granted the counterclaims, issuing a declaration that the Take-Two and 2K’s use of the tattoos in the video game was de minimis and fair use and, thus, did not infringe Solid Oak’s copyrights.
This case is No. 1:16-cv-00724-LTS-SDA.
Attorneys: Darren Heitner (Heitner Legal, P.L.L.C.) for Solid Oak Sketches, LLC. Dale Margaret Cendali (Kirkland & Ellis LLP) for 2K Games, Inc. and Take-Two Interactive Software, Inc.
Companies: Oak Sketches, LLC; 2K Games, Inc.; Take-Two Interactive Software, Inc.
MainStory: TopStory Copyright TechnologyInternet GCNNews NewYorkNews
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