Alexander v. Take-Two: Tattoo Artists’ Heraclea or their Salamis?
Tattoos today are becoming exceedingly popular in America,[1] but who really owns the rights to the ink? In 2020, two federal district courts came to two very different conclusions on two very similar issues.[2]
A Tale of Two Cities
In Solid Oak Sketches, LLC v. 2K Games, Inc., Plaintiff Solid Oak brought suit for copyright infringement.[3] Solid Oak alleged that 2K Games had infringed its copyrights by publicly displaying works for which Plaintiff owns copyrights – five tattoos depicted on NBA players Eric Bledsoe, Lebron James, and Kenyon Martin – in NBA 2K14, NBA 2K15, and NBA 2K16, Defendants’ series of basketball simulation video games.[4] The Defendants made three persuasive arguments in their motion for summary judgment, which the district court granted on March 26, 2020.[5] Many thought this decision brought an end to long looming questions regarding tattoos that enter the public eye.[6] Little did they know what direction an Illinois district court would take a mere six months later.
In Alexander v. Take-Two Interactive Software, Inc., Plaintiff Alexander brought suit for copyright infringement.[7] During her deposition, Alexander testified that she never gave any of her clients permission to use copies of her tattoo work in video games.[8] She had inked six tattoos on WWE professional wrestler Randy Orton which appeared in WWE 2K16, WWE 2K17, and WWE 2K18, Defendants’ series of wrestling simulation video games.[9] The Defendants raised the three affirmative defenses that succeeded in Solid Oak: “(1) Defendants had an implied license to display the tattoos; (2) Defendants’ use of the tattoos constituted fair use – especially due to the transformative nature of the use; and (3) Defendants’ use of the Tattoos was de minimis within the full context of the WWE 2K game.”[10] The Illinois district court rejected each argument, denying their motion for summary judgment on September 26, 2020.[11] This ultimately resulted in a jury trial that found in favor of Alexander and awarded $3,750 in damages.[12]
Implied License Affirmative Defense
On the issue of an implied license, the two district courts applied different standards to the same test. An implied license requires “(1) a person (the licensee) requests the creation of a work, (2) the creator (the licensor) makes that particular work and delivers it to the licensee who requested it, and (3) the licensor intends that the licensee-requestor copy and distribute her work.”[13]
On one hand, in Alexander, the Illinois court found a triable issue related to the third prong of the test.[14] Alexander testified that she has neither informed clients that they needed her permission to appear in different media, such as pictures, tv shows, or video games, nor has she ever given permission for them to use copies of her work in different media.[15] Finding a triable issue, the Illinois court denied the Defendants’ motion for this affirmative defense.
On the other hand, in Solid Oak Sketches, the New York court found an implied license existed by virtue of the respective artists knowingly tattooing individuals that “were likely to appear ‘in public, on television, in commercials, or in other forms of media.’”[16]
Fair Use Affirmative Defense
On the issue of fair use, both courts examined the four fair use factors:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.[17]
In regard to the first factor, the Alexander court found it weighed against fair use.[18] Alexander contended that the Defendants’ use was not transformative. Alexander said that she created the tattoos for the purpose of displaying them on Orton’s body and that the Defendants had the same purpose when implementing the tattoos into their video games. Regarding the character of the use, Alexander argued that the tattoos were prominently displayed and clearly visible in the video games.[19] Relying on a similar argument’s success in Solid Oak Sketches, the Defendants in Alexander cited the Second Circuit case Bill Graham Archives v. Dorling Kindersley Ltd. to argue that their use was transformative.[20] In Bill Graham Archives, the Second Circuit affirmed summary judgment in favor of the publisher for a Grateful Dead coffee table book where the plaintiff claimed to own the copyright to seven of the images which the publisher reproduced without permission.[21] The Second Circuit concluded that the first factor weighed in favor of the defendant because their purpose was clearly different from the plaintiff’s purpose.[22] In Alexander, the Defendants argued that the purpose of the tattoos was to create a “fun, lush experience for game users’” that only constitutes a small portion of the game.[23] Regarding the character of the use, the Defendants said that the tattoos in the video games are small and difficult to see.[24] The Alexander court distinguished the immediate case from Bill Graham Archives by finding material factual disputes regarding the Defendants’ purpose and characterization of the use.[25] This set the stage for a very different outcome from Solid Oak Sketches, because Solid Oak Sketches relied heavily on Bill Graham Archives in its fair use analysis.
In regard to the second factor, the Alexander court held it weighed against fair use. The court found that “creating a tattoo naturally entails creative and expressive efforts” and, despite Orton directing her, it was ultimately Alexander who created the tattoo.[26]
In regard to the third factor, the Alexander court held it weighed against fair use. The court found that “Although wholesale copying does not preclude fair use per se, it militates against a finding of fair use.”[27] Significantly, this understanding of copying the entirety of a work runs directly against the Second Circuit’s decision in Bill Graham Archives.[28]
In regard to the fourth factor, the Alexander court concluded that the issue could not be properly resolved on summary judgment.[29] The Defendants argued that there was no market for licensing tattoos and therefore Alexander’s market for her work was not harmed.[30] Alexander used a slippery slope argument, saying that Defendants’ use will create a trend by which others will fail to pay licensing fees for copyrighted works deemed necessary to create “realism.”[31] Although Alexander’s argument did not seem to address the issues at hand, the Illinois district court was persuaded to deny summary judgment.[32]
In Solid Oak Sketches, the New York district court took a different route while applying the fair use factors. The court relied heavily on the binding authority of Bill Graham Archives while applying its analysis.[33] Regarding the first factor, the Solid Oak Sketches court held it weighed in favor of fair use.[34] The court found the plaintiff and Defendants had different purposes for the use. It found the tattoos’ purpose when inked was as a means for the players to express themselves.[35] On the other hand, the court found that the Defendants reproduced the tattoos into the video games in order to most accurately depict the players.[36] Regarding the character of the use, the court cited a number of facts that show the tattoos are an inconsequential portion of the video games, such as “the Tattoos appear at 4.4% to 10.96% of their actual size,” and “[tattoos] only appear on three out of 400 available players, they comprise only 0.000286% to 0.000431% of the total game data, and they can not be seen clearly during gameplay.”[37] The court found the inclusion of the tattoos to be commercial in nature, but concluded that “the Tattoo images are merely ‘incidental to the commercial… value of the [game].”[38]
In regard to the second factor, the Solid Oak Sketches court held that it weighed in favor of fair use. The court stated, “the Tattoo designs are more factual than expressive because they are each based on another factual work or comprise representational renderings of common objects and motifs that are frequently found in tattoos.”[39] The court pointed to Lebron James’ “Child Portrait” tattoo, which itself was a reproduction of a photograph of his son, as an example of factual work.[40] The court used James’ “Flame” tattoo, a tattoo with flames, as an example of a common tattoo motif.[41]
In regard to the third factor, the Solid Oak Sketches court held that it did not weigh against fair use. Citing Bill Graham Archives, the court stated that copying the entire work at issue does not necessarily weigh against fair use “because copying the entirety of a work is sometimes necessary to make a fair use of the image.”[42] Ultimately, the court held that “while the Tattoos were copied in their entirety, Defendants did so in order to effectuate the transformative purpose of creating a realistic game experience.”[43]
In regard to the fourth factor, the Solid Oak Sketches court held that it does not weigh against fair use. Here, Plaintiff argued that the Defendants’ copying “diminished the commercial value of the tattoo artwork in the marketplace for licensing its use in other works included, but not limited to, video games, apparel, and memorabilia.”[44] The court disagreed, finding that Defendants’ use of the Tattoos is transformative because the tattoos in a video game cannot serve as a substitute for the use of tattoo designs in any other medium.[45] Furthermore, the New York district court found that “there is no evidence from which a reasonable fact finder could conclude that a market for licensing tattoos for use in video games or any other media is likely to develop.”[46]
With the similar sets of facts at hand and a significant amount of overlap in each side’s arguments, the two courts diverged greatly in their fair use analysis. The Alexander court found all four fair use factors weighed in favor of the Plaintiff, while the Solid Oak Sketches court found all four fair use factors weighed in favor of the Defendants.
De Minimis Use Affirmative Defense
In both cases, the respective Defendants raised a de minimis defense, which “protects a defendant from liability for technical copyright… violations if the copying is ‘so trivial as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying.”[47] Controversially,[48] the Alexander court questioned if the Seventh Circuit recognizes this defense to copyright infringement.[49] The court ultimately denied this defense because the Defendants copied the tattoos in their entirety, stating that a de minimis defense only allows “copying of a small and usually insignificant portion of the copyrighted works.”[50]
Conversely, the Solid Oak Sketches court focused its analysis on the question of whether a substantial similarity exists between the Defendants’ work and the protectable elements of Plaintiff’s work.[51] The New York court was influenced by the relatively small part that the tattoos played in the NBA video games. drawing on the fact that “the Tattoos are significantly reduced in size,” that “the Tattoos ‘are not displayed [in NBA 2K] with sufficient detail for the average lay observer to identify the subject matter of the [Tattoos], much less the style used in creating them,’” as well as “the players quick and erratic movements up and down the basketball court [in the video game] make it difficult to discern even the undefined dark shading.”[52] The court held that the tattoos in NBA 2K fall below the quantitative threshold of substantial similarity and granted Defendants a declaration that their use of the tattoos is de minimis.[53]
One Step Forward, Two Steps Back
So far this article has laid out the differences between Alexander and Solid Oak Sketches, but what does it all mean? Beyond the implications for tattoos in video games, commentators are split on the Alexander ruling. On one hand, Anthony Simon, Alexander’s attorney, said “[The case] was about vindicating the rights of little tattoo artists who have inked famous people all over the country.”[54] On the other hand, some critics see Alexander’s outcome as a threat to bodily autonomy and opposed to everything the tattoo industry stands for.[55] As Solid Oak Sketches played out, Lebron James said “I always thought that I had the right to license what I look like to other people for various merchandise, television appearances, and other types of creative works, like video games.”[56] James’ belief was correct according to widely-accepted tattoo industry standards where “once an image is created on the client’s skin, tattooers uniformly acknowledge that control over that image, with some limited exceptions, shifts to the client.”[57] Tattoo artists, lawyers, and especially those with a tattoo must engage with both sides of the argument in order to answer the long-standing question of who owns rights to the ink on one’s skin.
What does the future hold? It is very likely that the Alexander ruling will be appealed to the Seventh Circuit, where, if upheld, will lay the groundwork for a potential circuit split that could find its way to the Supreme Court of the United States. In the meantime, Alexander’s lawyer predicted that the Alexander verdict could “open the floodgate” for tattoo litigation.[58] Only time will tell if Alexander shall become known as tattoo artists’ Heraclea, the ancient Greek battle that coined the term ‘pyrrhic victory,’ or their Salamis, the turning point in the Greco-Persian Wars that eventually led to Greek victory.
Footnotes
