Jackson Kelly PLLC

The Legal Brief

Federal Court Sides with 2K Games in Copyright Case Over the Use of Tattoos

April 10, 2020

By: Jason L. Ott and Derrick L. Maultsby Jr.

In March, the U.S. Federal District Court for the Southern District of New York decided Solid Oak Sketches, LLC v. 2K Games, Inc.1, a dispute revolving around the use of tattoos on the players in a videogame. In the case, Solid Oak Sketches, LLC (“Solid Oak”), a tattoo designer and licensing company, alleged that videogame and software developers, 2K Games, Inc. and Take-Two Interactive Software (the “Developers”), impermissibly infringed on its intellectual property rights by depicting three professional basketball players with tattoo designs over which Solid Oak owned licenses. Ultimately, the Court determined that there was no infringement based on multiple copyright theories. 

First, the Court stated that the De Minimis Use defense applied because the ordinary observer would not be able to identify the tattoos as being appropriated from the copyrighted work. The Court reasoned that the videogame tattoos were not substantially similar to the tattoo designs at issue because the tattoos were too small and located on constantly moving figures, meaning they were not displayed with sufficient detail. 

Second, the Court held that the Developers were within their rights to utilize the tattoos based on an implied license that Solid Oak granted to the players whom it tattooed. In other words, because Solid Oak knew that the tattoos would become part of the players’ likenesses, the Court ruled that Solid Oak granted implied, non-exclusive licenses for them to use those tattoos. In turn, the players were within their legal rights to license their likenesses (including the tattoos) to the Developers without paying Solid Oak and without infringing on its intellectual property rights with regard to the tattoos. 

Third, the Court granted Take-Two’s counterclaim seeking a declaration that the use of the tattoos in the videogame constituted a fair use. In reaching that determination, the Court considered four factors: (i) the purpose and character of the use; (ii) the nature of the work; (iii) the substantiality of the use; and (iv) the market effect. As to each of those factors, the Court decided the following: (i) the tattoo images were incidental to the commercial purposes of the videogame because the tattoos were only used to accurately portray the players; (ii) the tattoos were not unique or creative enough to establish that the nature of the work eliminates the possibility of a finding of fair use; (iii) the use was not sufficiently substantial, because the videogames only utilized the amount necessary to depict the players accurately; and (iv) the use of these tattoos in the videogame did not stop Solid Oak from using its license to provide those tattoos to other customers and that there is no cognizable market for licensing tattoos specifically for use in videogames that could have been negatively affected. Accordingly, the Court ultimately concluded that all four factors weighed in favor of finding that the use of the tattoos in the videogame amounted to a fair use. 

This decision is significant in many ways. For Take-Two Interactive Software specifically, this decision will be helpful in its ongoing legal matter in the Southern District of Illinois involving its depiction of a copyrighted tattoo on a wrestler. However more importantly, this case will have far-reaching effects concerning intellectual property ownership regarding the depictions of copyrighted tattoos in videogames and beyond moving forward. Ultimately, giving greater ability for true to life depictions of our favorite athletes and stars on multimedia platforms across the spectrum.

 

 

1  Solid Oak Sketches, LLC v. 2K Games, Inc., 1:16-CR-00724-LTS-SDA (S.D.N.Y. March 26, 2020).

 

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