A United States District Court has recently held that three NBA superstars (including Los Angeles forward LeBron James) possess non-exclusive licences to authorize the reproduction of their tattoos as part of their likeness. Despite tattoo artists retaining copyright to their artistic creations, the Court’s decision in Solid Oak Sketches, LLC v 2K Games, Inc. (Solid Oak Sketches) suggests that tattoo recipients may receive implied authorization to reproduce their tattoos as part of their likeness if: their tattooist intends for their tattoo to become a part of their client’s likeness, they are aware that their client’s likeness is likely to be reproduced, and they do not request that their client limits the display or depiction of the tattoo that appears on their body.
In Solid Oak Sketches, the defendants (video game developer Take-Two Interactive Software and their subsidiary 2K Sports) reproduced life-like depictions of NBA players and their tattoos in three installments of their popular video game franchise “NBA 2K”. The plaintiff (Solid Oak Sketches), having obtained the exclusive licencing rights to five of the tattoos that appear on three of NBA 2K’s playable characters, filed a suit for copyright infringement. The defendants motioned for summary judgement, which was granted by the Court on the basis that the defendants’ infringement was de minimus and that it constituted fair use. Furthermore, the Court determined that an implied non-exclusive licence may be found “where one party create[s] a work at the other’s request and hand[s] it over, intending that the other copy and distribute it.” Based on an assessment of the facts, the Court held that even if Solid Oak were able to establish copyright infringement, their claim must fail because the three NBA players in question received implied licences to use their tattoos as elements of their likenesses when they obtained their tattoos: (i) the Players each requested the creation of the Tattoos, (ii) the tattooists created the Tattoos and delivered them to the players by inking the designs onto their skin, and (iii) the tattooists intended the Players to copy and distribute the Tattoos as elements of their likeness, each knowing that the Players were likely to appear in public, on television, in commercials, or in other forms of media.
Although merely persuasive in Canada, this decision follows years of national discussion with respect to the reproduction of tattoos in television, movies, and video games. Many have been quick to point out that the notion that copyright protection extends to tattoo artists and not their human canvases is consistent with the Canadian Copyright Act, however, with most high-profile cases occurring outside of Canadian jurisdiction, the jury is still out when it comes to binding jurisprudence. When it comes to tattoo ownership, questions remain with respect to moral rights and collaborative authorship, however, the issuing of an implied licence is compatible with Canadian copyright law and has even been previously contemplated in relation to tattoo authorship by Mark D. Penner and Olivia McKenzie.
Solid Oak is a noteworthy case that may impact the development of Canadian copyright law. It is wise for courts to consider whether an implied licence exists when assessing claims for copyright infringement concerning the reproduction of tattoos, but there is still work to be done when it comes to qualifying what constitutes a likelihood of reproduction. An implied licence can be easily ascertained when the recipient of a tattoo is a celebrity, but the Court’s decision in Solid Oak Sketches does not lend itself to circumstances where the recipient of a tattoo does not expect to reproduce their likeness but subsequently does so. Parity is an essential policy element that should not be taken into consideration when developing the common law. Therefore, it may ideally follow that an implied licence to reproduce a tattoo as an element of one’s likeness is presumed for all individuals who decide to “get inked”, not just celebrities.
Written by Lamont Abramczyk, a second year JD Candidate at Osgoode Hall Law School. Lamont is also a Clinic Fellow at IP Osgoode Innovation Clinic.
