Take-Two Argues Tattoos in 'NBA 2K' Are Fair Use

LeBron James - Cleveland Cavaliers 2016-Getty-H 2017
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Take-Two is taking its best shot at escaping a multi-million dollar lawsuit for depicting the tattoos of NBA superstars like LeBron James, Eric Bledsoe and Kenyon Martin in its NBA 2K video game franchise. On Wednesday, the publisher submitted a motion for judgment on the pleadings and argued that it has every right to showcase players as they appear in real life. The motion sets up a first-of-its-kind ruling from a New York federal judge, and Take-Two is warning of the stakes.

"In essence, Solid Oak argues that these public figures must seek its permission every time they appear in public, film or photographs and that those that create new works depicting the players as they actually appear (with their Tattoos) should be enjoined and pay damages to Solid Oak," writes Take-Two attorney Dale Cendali. "Yet, no case has interpreted copyright law as providing such a right, and doing so here would inhibit copyright’s purpose of encouraging the creation of new works. This is particularly troubling at a time when tattoos are becoming increasingly popular."

Solid Oak is the plaintiff in the case filed back in February 2016 after acquiring rights from various tattoo artists. The company, derided as an "opportunist" by Take-Two, argues that tattoo designs "easily satisfy" a standard for originality and are fixed in a tangible medium (the skin of humans).

At the moment, the copyright-ability of tattoos isn't the subject of debate.

Instead, Solid Oak and Take-Two have agreed to first put before the judge the defendant's question of whether the video game publisher's use of tattoos is either de minimis or fair use.

Take-Two's de minimis argument is rather straightforward.

"The Tattoos rarely appear in NBA 2K as they only are displayed when the players on whom they are inked are selected from the over 400 other NBA players that are available," states Take-Two's memorandum. "Even when the Tattoos appear, they are not prominent as the game camera generally uses a full-court shot with the players’ avatars appearing as small images, and the Tattoos thus appearing even smaller than they would in real life. This makes the Tattoos difficult (if not impossible) to see even when the players appear in the game."

The argument will only be a winning one if U.S. District Judge Laura Taylor Swain agrees that the qualitative or quantitative significance in the video game is what matters. Perhaps an example of the coming counter-argument comes from a decision four years ago in a case over sampling on the Beastie Boys' album, Paul's Boutique. There, a New York judge ruled that whether listeners could detect samples was irrelevant as what really mattered was the portion taken of the original. (The Beastie Boys eventually won the case anyway.)

Alternatively, Take-Two urges the judge to declare it has engaged in fair use.

The defendant goes through the four factors. For the purpose and character of the use, Cendali argues that while the tattoos were originally created to serve the NBA players' self-expression, Take-Two is using them for authenticity. To the nature of the copyrighted work, she argues that any creativity must be weighed against the fact that tattoos were copied to depict real-world subject matter realistically. Factor three measures the amount and substantiality of the portion used, and here, Cendali echoes some of the points over de minimis.

What arguably separates this case from other potential ones, possibly limiting any precedent if the judge chooses to focus on it, is the fourth factor that examines the effect of the use upon the potential market.

"Solid Oak’s license agreements with the tattooists expressly disclaim 'the right to tattoo a permanent tattoo rendering onto a person’s skin,'" states the brief. "Moreover, Solid Oak has admitted that it has never licensed to any party 'the ability to ink the Tattoos on other people.' Thus, it has no rights in or to the original market for the Tattoos (i.e., inking them on people)."

Anticipating a rebuttal over a licensing market for these tattoos, Take-Two's summary judgment motion warns the judge not to heed the theoretical and adds that Solid Oak has admitted to not obtaining the publicity or trademark rights "necessary" to depict the Tattoos on merchandise.

"Solid Oak’s lack of licenses in these overlapping intellectual property rights prevents Solid Oak from commercializing the Tattoos," states the brief.

It's an interesting argument, but also an odd one given that Take-Two itself has fought cases — like a battle with actress Lindsay Lohan — over whether publicity rights are really necessary. Other video game companies like Electronic Arts over Madden NFL have too and presumably lack such rights. Perhaps it's the word "merchandise" that leaves Take-Two some room to make some creative and commercial distinction. Nevertheless, Solid Oak appears to have eyes on licensing in the creative market.

Take-Two ends its brief with a few words that showcase why others might wish to pay attention here.

"If Take-Two’s motion is denied, Solid Oak will be able to use that decision to shakedown each of the publications and television programs in which those players have appeared, as well as any other video game publisher that depicts the Tattoos," states the brief (read in full here). "It would be illogical to allow Solid Oak to seek rents each time that a player bearing one of its tattoos commercializes his likeness, or worse, appears in public, and therefore arguably 'publicly displays' the Tattoos under copyright law. We know of no case reaching such a result. Doing so here would set a bad precedent affecting all bearers of tattoos and the companies that creatively depict them."

Solid Oak's response will be filed in court soon.