Whether a video game creator should be held liable for copyright infringement based on the copying of real-life tattoos in a virtual setting may finally reach a jury.
On 26th September, judge Staci M Yandle, sitting in the United States District Court for the Southern District of Illinois, denied a motion for summary judgement filed by games producer 2K. The creators of the WWE 2K title, amongst others in sport, asked the judge to rule that a copyright infringement claim brought by a former tattoo artist who inked multiple tattoos on WWE professional wrestler Randy Orton should be dismissed for three reasons: firstly, it had an implied license; secondly, fair use; and finally, de minimis use.
The federal judge also granted the separate summary judgement motion filed by tattoo artist Catherine Alexander on the issue of copying. Yandle cited the 2016 Seventh Circuit case of Muhammad-Ali v Final Call in determining that Alexander only needed to show that the defendants used her property and that the burden of providing the use was authorised falls squarely on the defendants.
In ruling that it was undisputed that Alexander holds valid copyrights for the tattoos concerned and that the defendants copied her works, Yandle also clearly expressed that copyrights in tattoos are valid as original pieces of artwork.
The video game creator acknowledged that it purposefully sought to recreate Orton’s persona, which included the tattoos fixated on his body, through a digital, authentic, recreation of photographs bearing his likeness. It obtained a proper license from WWE to portray Orton’s likeness in the gaming series and received approval from WWE to display Orton’s tattoos. However, Alexander argued that her consent to feature the tattoo artwork was required and never provided and, in fact, the WWE previously offered Alexander compensation in exchange for rights to use and produce the tattoo designs, which she rejected.
While Yandle was comfortable granting Alexander’s motion for summary judgment on the issue of copying, the judge was not willing to grant the defendants’ motion for similar relief based on any of its three main affirmative defences.
2K argued that the license to the tattoos was implied by Alexander as part of Orton rights to disseminate and display his likeness. The reason being that Alexander created the tattoos based on Orton’s request and never told him that it would be deemed infringement if he used them in a commercial manner. Orton provided WWE with the right to license his likeness to third parties, which the sports entertainment company did as part of its arrangement with the video game creator.
Three elements must be met for an implied license in copyright to be established. First, the alleged licensee must request the creation of a work. Second, the alleged licensor must create the work and deliver it to the licensee who requested it. Finally, the alleged licensor must intend that the alleged licensee copy and distribute the work.
Yandle agreed that there is no dispute surrounding the first and second prongs of the analysis; Orton requested the tattoo artwork and Alexander created the work, delivering it to Orton by fixing it on his body. The central question that remains is whether Alexander’s intent was for Orton to be able to copy and distribute the artwork to third parties such as the WWE. While Alexander testified that she has never provided permission to any of her clients to use copies of her works in video games, Yandle held that the evidence in front of her raises a triable issue of fact and is thus appropriate for a jury to decide with regard to whether an implied license existed.
Interestingly, this issue, as well as the issues of fair use and de minimis use that follow, were analysed in a summary judgment motion filed by similar defendants against the holder of copyrighted tattoo artwork. In the New York district court case Solid Oak Sketches v Take-Two Interactive Software, which was based on use of copyrighted tattoo artwork in the NBA 2K gaming series, federal fudge Laura Taylor Swain granted the defendants’ motion for summary judgment. On the issue of implied license, Judge Swain said that the players were not requested nor agreed to limit the display or depiction of the images tattooed on their bodies and thus had implied licenses to use them as elements of their likenesses. That was enough for the judge to determine that the intent of the artists was not to limit use by the players.
While a defence of fair use may be resolved by a court of law at the summary judgment stage of litigation, it is somewhat rare because it requires a finding that a reasonable trier of fact can only reach one conclusion and the analysis is one that must involve a hybrid of questions of law and fact. Here, the court held that was not the case and, in fact, found that many of the factors do not weigh in favour of fair use as a matter of law.
A court will look at four distinct elements in making a determination as to whether the doctrine of fair use should preclude a plaintiff’s claim for copyright infringement. First, the court will try to determine the purpose and character of the use, including whether the defendants engaged in commercial use as opposed to nonprofit educational purposes. Second, there will be an examination of the nature of the copyrighted work. Third, the court will examine the amount and substantiality of the portion of the copyright work used in relation to the work as a whole. Finally, a determination will be made as to the effect of the use upon the potential market for or value of the copyrighted work.
Whether use of a copyrighted work is transformative, which means that the original work has been changed in a way that it is transformed into a new creation, is a central component of looking into the purpose and character of fair use. 2K argued that its use of the tattoo artwork was transformative based on the tattoos being small in size and difficult to observe in the video game. Yandle said that the significance of the tattoos as displayed in the game is a material issue of fact that needs to be determined by a jury, as well as whether 2K used the artwork for some purpose distinct from Alexander’s purpose of creating them in the first place.
In the Solid Oak Sketches case, Swain found that the undisputed evidence demonstrated the defendants’ use of the tattoos was transformative.
'The Tattoos were originally created as a means for the Players to express themselves through body art,' wrote Swain in her legal opinion. 'Defendants reproduced the tattoos in the video game in order to most accurately depict the players, and the particulars of the tattoos are not observable. The uncontroverted evidence thus shows that the tattoos were included in NBA 2K for a purpose - general recognisability of game figures as depictions of the players - different than that for which they were originally created.'
Swain also felt comfortable determining, at the summary judgment stage, that the tattoos constituted an inconsequential portion of the video game.
The nature of the copyrighted work compares how creative the work is with whether it is informational. Yandle noted that Orton provided direction and input on the tattoos, but concluded that the art of creating a tattoo naturally entails creative and expressive efforts, indicating that this factor weighs in favour of Alexander. Swain, in the Solid Oak Sketches case, came to a different conclusion. She saw the tattoos as containing elements that were copied from designs and pictures that the artists did not create and thus were not creative or expressive.
The amount and substantiality factor also weighed against a finding in favour of 2K in the case concerning the WWE gaming series. Yandle recognised that wholesale copying does not preclude fair use in every occasion, but that it does militate against a finding of fair use. In the instant case, the defendants copied each tattoo in its entirety.
Yet, in the NBA 2K case, even though the defendants also copied those tattoos in their entirety, Swain found this factor to be in favour of the defendants.
'Here, the undisputed evidence shows 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,' wrote Swain. 'Considering this purpose, it would have made little sense for [the] defendants to copy just half or some smaller portion of the tattoos, as it would not have served to depict realistically the players’ likenesses.'
Finally, 2K argued in the case of the WWE gaming title that Alexander was trying to create a market for licensing tattoos that has never existed and is not likely to be developed. Alexander countered by stating that the unauthorised use will create a trend whereby other video game producers will feel as though they do not need to pay licensing fees for copyrighted works by resting on the defence that they are merely trying to mimic real-life in their creations. Yandle was not comfortable ruling in favour of the defendants on this prong and the others.
Swain, in the NBA 2K case, was extremely comfortable concluding that there was no cognisable effect on the market. Swain said the tattoos in the video game cannot serve as substitutes for the use of the designs in any other medium and 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 other media is likely to develop.
De minimis use
The defendants in the WWE video games case also claimed that the tattoos are a small percentage of the video game data, it is difficult to see the tattoos during game play and that Orton is merely one of many wrestlers in the video game. As such, they have said that the copying is so trivial as to fall below the threshold of substantial similarity, which is a required element of actionable copying.
Interestingly, Yandle said that she is not sure whether the Seventh Circuit recognises a de minimis defense and that neither party cited to decisions in the circuit surrounding same. Setting that aside, Yandle was not convinced by the defence, which does not apply to the wholesale copying of works in their entirety, which is what occurred in the instant case.
The Second Circuit does recognise a de minimis defence, and Swain rested on it, in part, to rule in favor of the defendants in the Solid Oak Sketches case. Judge Swain said that no reasonable trier of fact could find the tattoos as they appear in NBA 2K to be substantially similar to the tattoo designs owned by the plaintiff in that matter, highlighting that only three of more than 400 available players in the game featured the artwork and that the display of the tattoos is small and indistinct.
This is another area of material fact that Yandle said needs to be put in front of a jury. While Alexander testified that she does not know of any business she has lost based on the defendants’ use of the tattoo artwork in the video games, Yandle noted that Alexander could establish actual damages by using a hypothetical lost licence fee or the value of the infringing use to the defendants. The judge also referenced evidence that seems to indicate consumers purchased the video games for its authenticity to the wrestlers’ appearance, which includes their display with the tattoo artwork at issue.
While the issue of damages was not fully fleshed out in the separate Solid Oak Sketches case, it did not need to be, because the judge in that case was much more convinced that implied use, fair use and de minimis use was so clearly on the side of the defendants that the case could not progress to trial. However, with the WWE 2K case now heading toward a jury trial, different conclusions could be reached on a case that has very similar facts to that which was disposed of in the Second Circuit.