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Although their history goes back to prehistoric times, and they have served a variety of functions in different parts of the world and cultures, for many in Poland they have mainly been associated with the world of crime. In this country, their artistic value only began to be discovered in the late 20th century. Today, they adorn the bodies of many well-known personalities in the world of entertainment, sports and culture, and so, their commercial use in advertising, films and video games has become inevitable. The tattoo, and the practical legal problems which may arise in connection with their commercial use, comes back into focus thanks to recent American case law.
Polish legal doctrine recognizes a broad concept of the protected image as a personal right, according to which a person’s image consists of all elements by which a given individual can be identified as that particular person. Such an element may also be a tattoo. The peculiar nature of a tattoo as a creative work is based on the fact that it is fixed on the human body, thus it is disseminated by its bearer merely appearing in public and displaying the tattoo.
Although the copyright to a tattoo belongs to the creator of a given design (usually the tattoo artist), a tattoo can simultaneously become part of a given person’s image, and even their characteristic feature, guaranteeing their recognition.
Disputes concerning the use of tattoos in the advertising, film and video game industries
Companies such as Nike, Warner Bros., Take-Two Interactive Software and 2K Games, among others, have learned of the problems which the commercial use of a tattoo adorning a famous person’s body can cause.
In 2003, Nike, in cooperation with NBA star Rasheed Wallace, produced a short commercial where Wallace talks about the symbolic meanings behind his tattoos. Wallace’s tattoos play a key role in this commercial. Both he and Nike were sued for copyright infringement by the tattoo artist who made them. However, the court did not take a stance on this matter because the case was settled out of court.
The dispute between S.V. Whitmill – the tattooist responsible for Mike Tyson’s iconic facial tattoo – and Warner Bros., is an example, famous throughout the film industry, worth mentioning. The artist sued the studio for their use of his tattoo design on the face of one of the actors in “The Hangover II”. The image of the character “inked” in this way was also depicted on posters and other promotional materials related to the film. In this case, the parties reached an undisclosed settlement.
The most recent case concerns the video game developer and publisher Take-Two Interactive Software and its subsidiary 2K Games. The companies were sued by Solid Oak Sketches – the entity holding the rights to the tattoos of several NBA players. The dispute concerned the unauthorised use, in Solid Oak Sketches’ opinion, of 5 tattoos in the design of the avatars of three players in the NBA 2K video game. The court issued its long-awaited opinion in this case on 26 March this year.
A positive resolution to the tattoo copyright issue for the developer of the NBA 2K video game
In the suit brought by Solid Oak Sketches, the court found that Take-Two Interactive Software and 2K Games did not infringe the plaintiff’s copyrights. The questions of implied license, the de minimis rule (the complete form of this latin maxim, de minimis non curat lex, states that the law does not concern itself with the trivial), and fair use (a principle similar to permitted use under Polish law) were significant in deciding the case. In the court’s opinion, the players acquired an implied license to use their tattoos as part of their image, and the tattooists were aware that the players could appear on television, in advertising or other media.
But what seems crucial is that the court invoked the de minimis rule, and agreed with Take-Two that no reasonable observer would be able to conclude that the tattoos of players in NBA 2K are substantially similar to the tattoo designs licensed to Solid Oak. The tattoos at issue in the case only appear on three of the over 400 players (comprising between 0.000286% and 0.000431% of the total game data) whose images are used in the game. Even when the avatars of the players bearing the tattoos in question appear in the game, the tattoos are too small (the tattoos as depicted in the game are between 4.4% and 10.96% of their actual size), unclear and unnoticeable for the game’s users, also due to other game elements which draw the attention of users, such as other players, referees, the sounds of the audience, etc.
The court’s assessment of fair use, a mechanism to limit authors’ monopolies over their work, was equally important in deciding the case. The U.S. Copyright Act of 1976 does not explicitly define “fair use”, but rather, among others, specifies four factors which should be taken into consideration when assessing whether a given use of a protected work could be regarded as fair use or as an infringement of copyright. The following factors should be taken into account: (i) the purpose and character of the use, and an assessment of whether such use is of a commercial or non-commercial nature; (ii) the nature of the work; (iii) the amount and substance of the part used in relation to the work as a whole; and (iv) the effect of the use on the potential market for or value of the protected work.
In its assessment of the case through the lens of these factors, the court emphasised, among others, that the purpose for which the tattoos were depicted in the game was completely different from their original purpose. The tattoos were originally created as a means for the players to express their individuality, while the game developers’ aim was to reproduce their images as faithfully as possible. In the court’s opinion, the purpose of NBA 2K is commercial by nature, and thus the incorporation of the tattoos is also commercial. However, users do not buy the NBA 2K game due to the players’ tattoos. Additionally, the tattoos themselves do not appear in the game’s marketing materials. Therefore, the tattoos’ use in the game was found to be incidental to its commercial value.
In assessing the nature of tattoos generally as copyrightable works, the Court found that the tattoos had been previously published, and were based on common motifs. The Court also noted that none of the tattoo artists claimed that their works were unique in nature. On the contrary, the tattooists admitted that the tattoos were copies of popular motifs, or imitated other designs created by third parties. The court thus found that the tattoos were not sufficiently creative in nature to counter the application of the fair use exception.
The US District Court’s decision in the case summarized above lends support to protecting the use of a tattoo as an element of a person’s image at their discretion, in particular when the tattoo’s reproduction is incidental to the dissemination of their image as a whole.
It is interesting to note that there were media reports as early as 2013 stating that the NFL Players Association, concerned about potential copyright claims regarding their members’ tattoos, advised agents to ensure that players with tattoos settle any legal issues with the tattoo’s creators.
Where does Polish law stand on this matter?
Although it seems that the argument that an implied licence is granted for the use of a tattoo as an element of its bearer’s image could also be justified in the Polish legal order in certain circumstances, fair use and the de minimis rule are applied differently in our legal order.
Unlike American law, the Polish law on permitted use is not flexible. The Act of 4 February 1994 on Copyright and Related Rights provides for permitted use in certain specific cases, which are clearly defined by law. On the other hand, the U.S. Copyright Act of 1976, while defining certain types of fair use, also introduced a generally applicable formula for assessing whether other types of use fall within the fair use exception. This formula specifies the permitted purposes of a work’s use (e.g. criticism, commentary, news reporting, teaching and research), and establishes criteria to determine whether the work’s use was fair in a given case.
The de minimis rule was also significant to the U.S. District Court’s ruling on the Solid Oak case. In the context of copyright, this refers to situations where the infringement is so trivial in nature, or the copying of the work is so insignificant, that it does not meet the substantial similarity threshold. Polish copyright law incorporates a concept of broad protection, meaning that any product of creative activity is protected, even to the slightest degree. However, the above does not appear to prevent the application of an equivalent to the de minimis rule, that being a defence on the basis of an alleged abuse of subjective rights (Art. 5 of the Polish Civil Code). Of course, an assessment of the probability that such a defence would succeed will depend entirely on the circumstances of a particular case.
The appearance of disputes in other jurisdictions concerning the commercial use of tattoos protected by copyright, as well as people’s increasing use of tattoos as a form of individual self-expression, may result in similar disputes arising with regards to Polish law in the future, and thus requiring that Polish jurisprudence adopt a position in this regard. Currently, at least in the case of exceptionally original designs, the recommended solution is to ensure that one obtains legal title permitting the commercial use of a tattoo, if such a need arises in future.
Check-out our references:
- Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-CV-724-LTS-SDA, 2020 U.S. Dist. (S.D.N.Y. Mar. 26, 2020)
- Act of 4 February 1994 on Copyright and Related Rights (Journal of Laws of 2019, item 1231, as amended).