In copyright infringement case addressing use of plaintiff’s tattoos on realistic avatars in NBA video game, district court grants tattoo artist’s summary judgment motion as to ownership and originality and denies defendant video game developer’s motion, reasoning that de minimis use, fair use and implied authorization defenses all presented issues of fact for the jury.

Plaintiff James Hayden is a tattoo artist who has tattooed the likes of NBA star LeBron James. Defendants 2K Games Inc. and Take-Two Interactive Software Inc. are the developers of the video game series NBA 2K, an annually released game depicting players from the NBA in interactive simulations. The game displays and allows players to control realistic avatars of over 400 NBA players. Hayden brought suit, asserting copyright claims based on defendants’ depiction in NBA 2K of his tattoos on NBA players LeBron James, Danny Green and Tristan Thompson.

The parties filed cross-motions for summary judgment. Plaintiff sought summary judgment on the issues of copyright ownership and copying. Defendants argued that plaintiff’s tattoos are not sufficiently original to qualify for copyright protection and sought dismissal of plaintiff’s claims based on their affirmative defenses of fair use, de minimis use and implied license.

The court addressed plaintiff’s motion first. Reasoning that plaintiff’s tattoos were published within the meaning of the Copyright Act as soon as the process of inking the tattoos on the body of each player was “complete,” the court ruled in plaintiff’s favor on ownership. The court concluded that the tattoos were “sufficiently permanent and not transitory” and held that plaintiff had met his burden to show that he registered three of the tattoos with the Copyright Office within five years of their publication under Section 410 of the Copyright Act. Although LeBron James’ tattoos were registered outside of the five-year period, the court nevertheless ruled that sufficient proof of ownership had been submitted as to those works as well. The court thus concluded that the presumption of validity applied to all six of plaintiff’s copyrights, shifting the burden to defendants to rebut the presumption with evidence of invalidity.

The court also ruled in plaintiff’s favor on the issue of whether the tattoos, many of which were taken from famous works of art or other previously published works on objects (such as a deck of playing cards used in a Las Vegas casino), were original and thus protectable under the Copyright Act. Plaintiff submitted a declaration detailing his process of creating a tattoo from a client’s idea to the final result, stating that it requires “countless artistic decisions, including as to the precise shape, style, expression, shading, line thickness, density, color, and orientation on the shoulder, to name just a few, each carried out through countless artistic and creative acts.” The court concluded that plaintiff’s tattoos met the “extremely low” bar of creativity required for a work to be original and, thus, protectable.

Turning to defendants’ affirmative defenses, the court noted that defendants conceded that their purpose in building their avatars “was to replicate the NBA Players exactly as they really look, from their physical appearance (hair, blemishes, skin color, size, etc.) down to their moves and skills.”

Defendants first argued that their use of the tattoos was de minimis because the tattoos appear only fleetingly and are small in size when they appear on a user’s screen. Noting that the relevant factors in determining whether the use of visual images is de minimis are to be addressed from the perspective of an “average lay observer,” the court concluded that both the issue of the tattoos’ observability and the question of whether NBA 2K’s depiction of the tattoos diminishes their value were questions for the jury.

Addressing defendants’ fair use defense, the court applied the four factors, concluding that fair use also presented issues of fact for the jury. On the first factor, the purpose and character of use, the court held that reasonable jurors could differ in their views of whether the use of the tattoos was transformative as well as “what weight should be accorded to commercialism,” noting that defendants’ goal in using the tattoos on the avatars was realism, whereas plaintiff “created body art and imagery which hold personal meaning for the three NBA players.” Addressing the second factor, the nature of the copyrighted work, the court held that the work was, without question, creative rather than factual, weighing in plaintiff’s favor. As for the third factor, the amount and substantiality of the use, the court held that the quantity as well as the “quality and importance” of the materials used, which included the size and appearance of the tattoos during the virtual game, presented yet another issue of fact for the jury. Finally, with respect to the fourth factor, the effect on the market, the court held that “a jury could find that the likelihood is less that someone might choose to acquire tattoos from Defendants’ video games, rather than obtain tattoos from Plaintiff.”

As for defendants’ implied authorization defense, the jury will need to determine whether or not plaintiff intended to authorize or license the third-party use of his tattoos, reasoning that “intent is a fact question.” The court thus denied defendants’ motion for summary judgment in its entirety.