Use of player’s tattoos in NBA 2K found to not be copyright infringement. SOLID OAK v. 2K GAMES

Use of player’s tattoos in NBA 2K found to not be copyright infringement. SOLID OAK v. 2K GAMES

A copyright is a set of exclusive rights granted to the creator of a new work of expression.  When a creator fixes a work in a tangible medium they are automatically granted a copyright to the work.  The creator can strengthen the rights associated with the copyright in the United States by registering the work with the United States Copyright Office, but registration is not a condition precedent to the grant of a copyright.  The owner of a copyright is granted the exclusive right to reproduce, distribute, perform, display, transmit and make derivative works based on the original, if someone other than the copyright owner attempts to exercise one of these exclusive rights that can be considered copyright infringement.  When a copyright owner feels that their copyright is being infringed on they can request an injunction and damages.  But, an accusation of copyright infringement is just the beginning of the process.

The purpose of copyright law is to promote the progress of useful arts and science by protecting the exclusive right of creators to benefit from their works.  Inspiration for a new work is frequently drawn from an earlier work.  Therefore copyright law will excuse a certain amount of borrowing from earlier works.  When a significant portion of a new work borrows from an old work, the concept of fair use is relevant.  When a trivial portion of an old work appears in a new work, the concept of De Minimis Use becomes relevant.  Further complicating matters, the actions of a copyright owner may imply that the copyright owner has given permission to use the work, this is known as an implied license.

To prove copyright infringement, a plaintiff must establish (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.  This kind of copying can be proven either with direct evidence that the defendant actually copied the work, or by showing that the defendant (i) had access to the work and (ii) that the works are substantially similar.  This is all based on the assumption that the defendant’s copying was done without permission.  If it turns out that the defendant had a license to copy the work, either explicit or implied, then copyright infringement has not occurred.

SOLID OAK SKETCHES, LLC v. 2K GAMES, INC., 1:16-CR-00724 (S.D.NY 2020) is a case where an implied licence negated a finding of copyright infringement.  The case revolves around tattoos on NBA players.

Defendants in this case are video game publishers.  Defendants annually release an updated basketball simulation video game that depicts basketball with realistic renderings of different NBA teams, including lifelike depictions of NBA players and their tattoos.

Plaintiff entered into copyright agreements with several tattoo artists who had performed tattoo work for several NBA players. Plaintiff registered the copyrights for these works in 2015.

Plaintiff alleges that Defendants infringed its copyrights by publicly displaying works for which Plaintiff owns copyrights, five tattoos that are depicted on NBA players Eric Bledsoe, LeBron James, and Kenyon Martin.  The video games that allegedly infringe on the Plaintiff’s copyright were released in released in 2013, 2014, and 2015.

Defendants moved to dismiss Plaintiff’s complaint for copyright infringement, arguing that the use was de minimis, that it was a fair use and that there was an implied license to use the work.  The court found for the Defendant on all three factors and granted the motion to dismiss.

With respect to de minimis use the court found that the reproductions of the tattoos in the game were not substantially similar to the copyrighted works because the tattoos in the game were only 4% to 10% of their original size and barely visible on 3 out of 400 characters in the game.  With respect to fair use the court found that all 4 fair use factors weighed in favor of the Defendants.

With respect to an implied license, the court found that the tattoo artists granted an implied license to the person who received the tattoo.  The court noted that “Although the Second Circuit has not yet ruled on the precise circumstances under which an implied non-exclusive license will be found,” courts in this Circuit have found an implied non-exclusive license “where one party created a work at the other’s request and handed it over, intending that the other copy and distribute it.”  Depositions from the tattoo artists highlighted the fact that the tattoo artist knew they were tattooing a famous NBA player and that the tattoos would be publicly displayed when the player was photographed.  Based on that the court found the tattoo artists granted the Players nonexclusive licenses to use the tattoos as part of the Players’ likenesses.

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