Written by Sofia Castillo
On March 26, 2020, the district court for the Southern District of New York issued a landmark ruling in a case closely followed by the film, video game, sports and tattoo industries. Where for several years the only direct precedent on the issue of expressive tattoos in expressive works was limited to early rulings in cases like that involving The Hangover or relegated to settlements, Solid Oak Sketches, LLC v. 2K Games, Inc. firmly resolved all doubt. In the ruling, the court granted the defendant video game publishers’ motion for summary judgment on three separate grounds, finding that the defendants’ depiction of basketball superstars’ tattoos in a “NBA2K” video game was: (1) a “de minimis” use, (2) allowed under the players’ implied license given by the tattoo artists, and (3) a fair use. This decision comes almost exactly two years after Judge Swain denied the defendants’ motion to dismiss the claims.
On the first ground, the court looked to precedent regarding “de minimis” use principles in other contexts. Ultimately, the defendants’ video evidence convinced the court that NBA2K’s depiction of tattoos on basketball superstars LeBron James, Kenyon Martin and Eric Bledsoe (and none of the other over 400 available players in the game) was “de minimis” and therefore “no reasonable trier of fact could find the Tattoos as they appear in NBA 2K were substantially similar to the Tattoo designs licensed to Solid Oak.” The court found that the small size and distorted angles of the tattoos’ display as part of the game play was “indiscernible to the average game user,” making the plaintiff’s copyright expression insufficiently observable to rise to the level of an actionable taking.
The court also sided with the defendants on the issue of whether the players had an implied non-exclusive license to use the tattoos as part of their likenesses that preceded Solid Oak’s license. Relying on testimony from the tattoo artists and the players, as well as experts, the court found that “the Players, who were neither requested nor agreed to limit the display or depiction of the images tattooed onto their bodies, had implied licenses to use the Tattoos as elements of their likenesses.” In turn, Judge Swain ruled that the defendants’ right to use the tattoos in their video game depictions of the players’ likenesses “derives from these implied licenses, which predate the licenses that Plaintiff obtained from the tattooists.”
The court’s embrace of the defendants’ arguments did not stop there: the court also ruled that all four factors of the fair use analysis favored fair use. On the first factor, the character and purpose of the use, the court ruled that the defendants’ use was transformative due in part to the tattoos’ reduced size and unrecognizability. The court separately found that the defendants used the tattoos to accurately depict the players — a very different purpose from the original purpose of the tattoos as expression through body art. On the second factor, the nature of the copyrighted work, the court found that the tattoos were more factual than expressive because they were based on factual works or represented common objects frequently found in tattoos. On the third factor, the amount and substantiality of the use, the court found that copying the entirety of the tattoos was justified by the transformative purpose of “creating a realistic gaming experience.” Finally, the court found that the fourth factor, which looks at market effect, favored the game makers, because their use did not substitute for the original. Not only was the use transformative from the original purpose, but the plaintiff had failed to show “that a market for licensing tattoos for use in video games or other media is likely to develop.”
Judge Swain’s strong and conclusive opinion is yet another victory for the video game industry, which recently saw the demise of another lawsuit trend: claims over dance moves in video games. That the judge found three separate bases for dismissal also sends a message that even if the case is appealed, a reversal is far from a slam dunk.