Athletes v Artists: Who Owns the Ink?
Updated: May 20, 2020
Originally Published in: https://lexsportiva.blog/2019/12/10/tattoos/
We do not claim any rights over the images here presented, we are only utilizing them for educational purposes, as used in the original posting.
“Tattoos in sports video games face legal challenge”
“Tattoo Artist Continues Legal Battle over Art Features in UFC Branded Video Game “
“NBA 2K’ Videogame Maker Sued for Copyright Infringement Over Lebron James’ Tattoos”
“Lawsuit filed over copyrighted tattoos on players in NBA 2K16”
Why have these headlines recently appeared in the media? How can tattoo artists sue videogame makers for a tattoo on someone else’s body? What do artists have to gain from suing huge production companies?
The increasing popularity of tattoos,
The laws and treaties that protect copyrighted works, and
Although these simple answers provide reasoning, the issue is more complex, and there are several aspects to consider in order to avoid serious legal issues.
History of Tattoos
Tattoos are a permanent form of body art, found in numerous cultures around the world. Tattoos date back thousands of years; the oldest evidence of human tattoos is believed to be from between 3370 BC and 3100 BC. Archeological findings of ink inscriptions on remains show us that the first tattoos were made using soot or ash from fireplaces. The reasons behind tattoos differ and reflect the cultures and civilizations in which they were created. In ancient Chinese practices, tattoos were viewed as barbaric, and as such, were highly stigmatized, since convicted criminals were branded with tattoos informing other members of the society to stay away. In Samoa, tattoos are used to mark leadership roles in society and represent a dedication to the culture and endurance of the painful procedure. In ancient Rome, criminals, prisoners of war, and slaves, branded themselves with their status. In the 1970s, tattoos began to become more mainstream and accessible and were no longer considered only for outcasts of society. Today, tattoos are prevalent among much of the world population.
Intellectual property is the type of property that results from creations of the human mind, the intellect. The creators of intellectual property can acquire rights as a result of their work, and they can assign or license those rights to others. Moreover, the moral rights of an author of a copyrighted work are generally recognized in the Berne Convention, many civil law jurisdictions, and, to a lesser extent, in some common law jurisdictions. Unlike economic rights, which allow the owner to derive financial reward from the use of his works by other moral rights, which allow the author to take specific actions to preserve the personal link between himself and the work, cannot be transferred by the author; they may, however, be waived.
Copyright is a branch of intellectual property that protects literary and artistic works. Copyrights protect actual works; the expression of thoughts, not the ideas themselves. The oldest international Convention governing copyright is The Berne Convention from 1886. Article 2 of the Convention states that the expression ‘literary and artistic’ works shall include every production in the literary, scientific, and artistic domain, whatever may be the mode or form of its expression. There is no requirement that the work should be good or have artistic merits, however, the work needs to be original. The meaning of this requirement varies from country to country and is often determined by case law.
Generally, in common law countries, very little is required; the work must not be a copy of another work and the author should have displayed a minimum amount of skill, labor, and judgment in making it. In most civil law jurisdictions, however, the requirement is often much stronger; a creative effort would be required from the author, that may go beyond mere skill, labor, or judgment. The owner of the copyright in a protected work may use the work as he wishes and may prevent others from using it without his authorization. The rights granted under national laws to the author are considered exclusive rights to use the work or to authorize others to use the work, subject to the legally recognized rights and interests of others.
Are Tattoos Copyrightable?
When people pay to get a tattoo, many of them mistakenly think that the payment automatically transfers the copyright, and that this person now owns the artwork. Ownership of the copyright is, however, distinct from the ownership of any material object that embodies that work. Ideas are not copyrightable, but the expression of the idea is, If a work can be protected under copyright law; the default legal standard is that the person who created the work owns the copyright. The Copyright Act protects the original works of authorship fixed in any tangible medium of expression.
In the United States, the skill level of a copyrightable work is not set high. In most cases, the artist satisfies this criterion by drawing the design on paper that is later transferred to the skin. A work is deemed original if it is not a verbatim copy of another work. It is also well established that original drawings that are turned into physical works of art are also protected by copyright. “Courts require the work to be independently created and minimally creative.” The Supreme Court has set this bar relatively low, and has held that most things “make the grade quite easily”. Therefore, tattoo artists who design tattoos themselves almost always meet this requirement. The Supreme Court has held that a “directory that contains absolutely no protectable written expression, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement”, making the requirement very attainable.
“Works of Authorship”
“Works of authorship” include art, and nearly all interpretations of tattoos can be considered art under the law. There is no requirement that the work needs to be good or have any artistic merits.
A work is fixed if it is permanent enough to be perceived for a period of time longer than transitory duration.Fixation requires the work to be created on something that a person can see and perceive more than momentarily. Tattoos, by their very nature, are permanently placed on human skin and can be seen by someone nearby, a tattoo is permanently fixed onto the client until it is removed. No case law, or other authority, dissuades from concluding that the definition of ‘fixed’ imposes both an embodiment requirement and a duration requirement.
A tangible medium of expression can be anything the work can be fixed on; Jeffery Harrison, Professor of Copyright Law, University of Florida Levin College, stated: “If it is copyrightable on paper, it is similarly copyrightable on any medium that lasts, including skin.” Artwork fixed on the skin is similar to artwork fixed onto any other type of three-dimensional canvas. When the artist applies the image to the skin, this automatically established ownership of the copyright for the artist. From that moment, the artist can control the use of the image and may decide to assign or license that image.
Authorship is required for valid copyright. Only the authors can register their copyrights, benefit from the rights derived from them, and transfer the copyrights, if they so wish. If the artist creates the design of the tattoo, particularly for a specific customer, this requirement is easy to establish. The client cannot own the copyright on his own because ideas themselves are not copyrightable, only the expression of these ideas.
Often, however, the creation of the tattoo is a collaboration between the artist and the client. For the work to be considered a joint work, the client would have to contribute things to the design of the tattoo significant enough that the design would not be possible without those suggestions. Joint works require the intention of both parties to merge their separate copyrightable contributions into a single, unitary whole. If a client brought the design of the tattoo on paper, and the artist replicated that tattoo onto the client, this would most likely be considered a joint work.
Authors of artistic works have the exclusive right of authorizing the reproduction of these works, in any manner or form. Meaning that the right of the owner of the copyright to prevent others from making copies of his works without this authorization is the most basic right under copyright. Therefore, the right to control the act of reproduction is the legal basis for many forms of exploitation of protected works. These rights granted to the owner are exclusive rights to use the work or to authorize others to use the work, subject to the legally recognized rights and interests of others.
In addition to the fundamental right of reproduction, the owner has a right to authorize the distribution of copies of works; evidently, the right of reproduction would be of little economic value if the owner of copyright could not authorize the distribution of the copies made with his consent. A copyright holder cannot sue for copyright infringement, however, unless the copyright has been registered with the United States Copyright Office. So far, however, there have been no court decisions on copyright infringement of tattoos, and all such cases have been settled out of court.
Defenses and Remedies
There are some acts of reproduction that are exceptions to the general rule since they do not require the authorization of the author; these are known as ‘limitations on rights’.
Fair Use Doctrine
Fair use is any use of copyrighted material done for a limited and transformative purpose, such as to criticize, comment upon, make a parody of, or use for educational purposes. Such uses are permitted without permission from the copyright owner.
The four factors judges consider when analyzing fair use are:
The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
The nature of the copyrighted work;
The amount and substantiality of the portion used; and
The effect of the use upon the potential market for or value of the copyrighted work.
Some works fall into the public domain; they are not protected by copyright and thus are not subject to infringement claims. These include works for which the original copyright has expired and, if applicable, has not been renewed. Additionally, the fair use doctrine allows the use of portions of a copyrighted work for parody, criticism, commentary, or educational purposes.
First Sale Doctrine
The right of distribution is usually subject to exhaustion upon the first sale or other transfer of ownership of a copy, which is made with the authorization of the rights owner. After the copyright owner has sold or otherwise transferred ownership of a particular copy of a work, the owner of that copy may dispose of it without the copyright owner’s further permission, by giving it away or even by reselling it.
The client receives the right of the first sale through the purchase and receipt of the tattoo. Therefore, the client obtains an implied, yet limited, right to use or dispose of the tattoo without requiring permission from the artist. The first sale doctrine can be used as a potential defense against a copyright infringement claim. The fact that tattoos are copyrightable does not necessarily mean that the artist is entitled to profit from the publicity.
“[T]he Ninth Circuit held that a copyright owner must express the intent to restrict the scope of a license when they deliver the copyrighted work. Thus, an implied license will be limited to a specific use only if that limitation is expressly conveyed when the work is delivered”. Uses of a copyrighted work that stay within the bounds of an implied license do not infringe the copyright.
While a non-exclusive license will not transfer sole ownership to a tattoo holder, it does “permit the use of a copyrighted work in a particular manner”. Within each license, some actions are acceptable, in regard to using the tattoo, and some actions are not. If the athlete exceeds the scope of the license, the tattoo artist may then commence an action for infringement. Determining the scope of infringement is unsettled, mostly because the law is unsettled and based on a case-by-case analysis.
Implied licenses allow people to display their tattoos in public and even on television broadcasts and magazine covers. The problem arises when those tattoos are digitally recreated on avatars in video games, that allows, people other than the artist, to profit from that particular video game having the image and likeness of famous athletes.
Works for Hire
Tattoos can also be considered “works made for hire,” and if that is the case, the athlete owns the copyright. A work for hire is a work specially commissioned or prepared by an employee within the scope of employment if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. Tattoos can be made as a work for hire, which allows the athlete to monetize the tattoo in any way the athlete wants because the athlete has obtained the copyright to that tattoo. The problem is that a work for hire needs to be a written agreement and most athletes do not have such an agreement with them when they are getting their tattoos.
So what about athletes?
In the future, it could be possible that when an athlete goes to get a tattoo, they will be required to sign a waiver with provisions stating that the artist retains the copyright of the design of that tattoo. For athletes and other celebrities, it is just something to think about before getting a tattoo. The main argument surrounding litigation is whether the tattoo design is copyrightable, and if that is the case, what rights do the artist have if the waiver is silent, and there was no separate agreement. (Whitmill v. Warner Bros. Ent. Inc., Civil Action No. 4:11-cv-752 E.D. Mo (2011)).
Yolanda King, a professor of Intellectual Property Law at Northern Illinois University College of Law, stated that: “From a business perspective it would be more feasible to strip them from the game, or to put some designs in the public domain on their bodies”. Although that would solve the whole problem, it would be a departure what publishers, like 2K Games, try to accomplish with their games, which is to try to replicate athletes as accurately as possible. Athletes are not likely to support this approach either, like Lebron James wrote in a declaration of support for Take Two and 2K Games; “My tattoos are a part of my persona and identity, if I am not shown with my tattoos, it would not really be a depiction of me”.
Video game companies pay to license copyrighted music. Theoretically, they could obtain the licenses to the tattoos as well, although they would most likely want to avoid the cost and the logistical burden of negotiating with each separate artist for rights to their tattoos. Player’s Unions license the players’ likenesses to video game publishers, and they have advised athletes to secure licensing agreements before they get tattooed. Most artists have an incentive to sign rather than pass up a client who would provide publicity for their work. Therefore, participants in the sporting industry like the NFL players’ Association (NFLPA) are already requiring their athletes to get the artist to sign a work-for-hire agreement, waiving the artist’s rights to the tattoo. Both sides will most likely want the other to sign an agreement, and getting tattoos will likely lead to negotiation, or at least a discussion to be had, before getting a tattoo.
Like most things in life, a negotiation may come down to money. The athletes could look to incentivize the artist to sign a work for hire agreement with more money, or some other kind of exposure or publicity. For artists, if the athlete refuses to sign their waiver, they can refuse to do the tattoo. In this case, artists would have more leverage if they can afford to turn down a tattoo, but if the athlete is famous, the artist could lose that leverage, more so if the publicity is essential to the artist, along with any recommendations the athlete could give if they are happy with the work.
Athletes have a right to monetize their image rights, and the artworks on their bodies are considered part of their image. The problem does not seem to be when athletes with tattoos appear in magazines or on television, the right to this also falls within the category of an implied license. The problem seems to be that when the image of these athletes is digitally reproduced in videogames or movies there is an infringement on the artist’s right to reproduction. Since copyright does not require registration and is automatically established by the creation of the work, unless the athlete has a licensing agreement with the artist that allows for sublicensing, the athlete does not have the right to assign the copyright to a third party. (Reed v. Nike, Inc., No. 3:05-CV-00198 (D. Or. Feb. 10, 2005)).
The US the situation is different than in most European countries, because moral rights are not protected in the US, as they are in many civil law countries. If moral rights were to be protected, the artist could assign the economic rights and then waive the moral rights if he/she wishes. Moreover, moral rights (like having your name mentioned as the author) can never be assigned to another person, only waived if the artist wishes to do so. The protection of these moral rights might, however, be enough for the artist to sign a waiver of copyrights, because even though getting paid for the reproduction of the work can be very lucrative, the chance of it happening is pretty unlikely, and the athlete could always decide to find another artist who would be willing to sign a waiver. The fact that the artists’ name is mentioned in reference to a tattoo will provide the artist with publicity and exposure, leading to many new potential clients, which means that the artist profits and gets the credit they deserve. It is possible that the protection of moral rights could provide some relief to the lawsuits being filed based on copyright infringement. After all, the publicity that the athletes and artists receive from the sales that the videogame companies make, grants bigger exposure to the tattoos on famous athletes and is lucrative for everyone.
It is likely that in the future, the contract that athletes sign with clubs, leagues, or players’ association contain a clause that requires the athletes to seek authorization from the artist for the license of the tattoo before getting it, and for the athlete to participate in this sport, this will be a mandatory requirement. As for artists, most likely they will sign these waivers, especially in return for a larger fee or recognition as the creator of the tattoo. It is also possible, that there will be a court case to resolve the matter at some point, as for now, it is more about being aware of the rights of the owner of the copyright, and the negotiation power the parties have.
Why now? Simply because tattoos have become more mainstream, more athletes have tattoos, as well as the technological advancements that allow for replicating the tattoos on digital platforms with incredible accuracy. Money, publicity, and acknowledgment of authorship are all reasons for artists to sue, and multiple laws and treaties offer to give the artist the opportunity to sue for copyright infringement. The issue is complex and won’t go away any time soon. Without a clear-cut decision, it is impossible to know the right answer, but knowledge of the legal issues surrounding tattoos and image rights is vital to its understanding.