NBA stars like LeBron James can give the NBA permission to use their likenesses, but they can’t grant the same for electronic recreations of their tattoos, according to a new filing from a company that claims to own that right in a legal battle over a popular video game.
Solid Oak sketches in 2016 sued Take-Two Interactive, alleging it owns the copyrights for tattoos that are depicted on several prominent professional basketball players who are featured in NBA 2K16. It is asking the court to deny Take-Two’s motion for summary judgment and to ignore the testimony of several of its experts in support of that motion.
“When LeBron James has his photograph taken, the content immediately has two streams of rights that will govern how it may be used commercially,” begins the filing. James has rights of publicity, which control how his name, image and likeness can be used commercially. Meanwhile, the content creator — in this scenario the photographer — owns the copyright to the image.
Solid Oak likens a tattoo artist to a painter who is commissioned to create a work of art. The person paying for it has input into the process, but the artist has ultimate control of the finished product and ultimate ownership of it.
While James may have granted to Take-Two his rights of publicity through the NBA or its players association, Solid Oak argues, that doesn’t include the copyright to the artwork in his tattoos.
“Importantly, neither Mr. James nor any of the other relevant professional basketball players whose tattoos are at issue in the instant lawsuit, did or could have licensed the underlying copyrights to Defendants. Plaintiff has never attempted to argue that rights of publicity were not granted by Mr. James to Defendants through a third-party conduit (i.e. the NBA and/or NBPA), and Plaintiff has no interest in disputing same. However, Plaintiff disputes that any granting of consent to use Mr. James’ likeness is at issue in this dispute or that the issue of consent is even relevant to the copyright infringement claims made herein.”
U.S. District Court Judge Laura Taylor Swain in March declined to dismiss the matter on fair use grounds, despite an argument from Take-Two that it would allow Solid Oak to “shakedown” any publication or TV program in which one of the relevant players has appeared.
Solid Oak is now trying to convince Swain that it’s also not appropriate to grant summary judgment on those grounds. “Defendants would like the Court to believe that any result in favor of Plaintiff’s claims will lead to a slippery slope that ends with the suppression of all content featuring professional basketball players unless the content providers first obtain licenses from copyright holders,” states the filing. “Plaintiff is not concerned with, nor is this case concerning, the way in which broadcasters air professional basketball games and make no claim to royalties from broadcasters for these types of live transmissions. Instead, Plaintiff is merely alarmed by Defendants’ acknowledged and intended use of the tattoo artwork at issue in a graphical representation that gets as close to copying the artwork as possible, for pure commercial gain.”
In response to another defense, Solid Oak argues there’s no way for the court to determine at this stage whether the use is de minimis because the game is highly customized for each user’s experience.
Solid Oak also wants Swain to ignore evidence submitted by Take-Two’s experts. It argues a survey about why consumers buy the NBA 2K games is irrelevant; a report that claims there isn’t a market for licensing tattoos in video games was written by an anthropologist, not an economist or market researcher; another report that argues the tattoos are rarely noticed in the game is merely speculation; and another expert’s report about profits merely states a legal conclusion.
Read the full motion below.