June 2019.
Introduction
Tattoos are a form of self-expression. A person’s character and life history can be expressed through the ink on their skin. This often stems from a desire to rebel from everyday pressures in society to conform. Having a mark placed on one’s skin makes one different from others, at least a little bit, especially when the design is unique and not simply a piece of flash art that has been copied from a tattoo shop’s wall.
Moreover, a tattoo can make one part of a tribe. It can signify a membership or an affiliation. It can be an indication of the bearer’s preferences – what the bearer likes to experience or consume. It can portray the bearer’s allegiance to a particular place, event, person or product. In legal terms, the tattoo can become a statement on one’s skin that makes reference not only to the wares or services of another person – the tattoo can embody the other person’s trademark itself.
Since most everyone nowadays is visible thanks to the Internet, and since many in the media – notably professional athletes and entertainers – are heavily tattooed, this form of self-expression is rife with legal ramifications to be considered by artists, advertisers, brand owners, lawyers and the courts. This paper examines the intersection between self-expression and the property right of others, exploring the legal implications of tattoos in the media.
Cover-Ups for Athletes and Others in the Media
An easy way to remedy a potential infringement problem is to require tattoos to be covered if they are going to be seen in the media. China recently has attempted this, albeit as a matter of ideology or morality rather than liability. However, the blowback has been instructive because it shows that tattoo cover-ups are hugely unpopular and are viewed as misrepresentative of a person’s appearance or personality. Announced in January 2018, there are four “don’ts” that the media in China must now abide by. According to Gao Changli, the publicity department director at the State Administration of Press, Publication, Radio, Film and Television of the People’s Republic of China (SAPPRFT): (1) “Absolutely do not use actors whose heart and morality are not aligned with the party and whose morality is not noble”; (2) “Absolutely do not use actors who are tasteless, vulgar and obscene”; (3) “Absolutely do not use actors whose ideological level is low and have no class;” and (4) “Absolutely do not use actors with stains, scandals and problematic moral integrity.” Chinese news outlet Sina has reported that the regulator SAPPFRT now "specifically requires that programs should not feature actors with tattoos [or depict] hip hop culture, sub-culture and dispirited culture”. As a result, the Chinese Football Association has also reportedly given a "no visible ink" order to teams in China's professional leagues, meaning that Chinese players have had to wrap-up their ink. Citizens reportedly have reacted with anger on social media with negative comments. “How can a government with high culture have such childish logic?” one user wrote on Weibo, China’s equivalent of Twitter.
Similar bans have appeared in places like Japan, where tattooed rugby players, coaches and fans have been asked to cover up before games, on grounds that the tattoos might offend viewers. This is not entirely surprising because of the deep cultural association in Japan with tattoos and criminal underworld members known as Yakusa. However, the Japanese ban has become a hot topic because it purportedly would extend to international players participating at the upcoming 2019 Rugby World Cup who will be encouraged to wear rash vests or wet suits to cover up their tattoos.
In 2013 and again in 2015, the National Football League (NFL) in the United States has rolled-out tattoo bans. Players with visible tattoos have been told to cover them before games, practices and press conferences. Those who chose to not abide by the new regulations have been threatened with fines and other disciplinary action including possible suspension. However, there also appear to have been a lot of mixed messages, with decisions apparently made on an ad hoc basis because these bans occur in an employment context. One rookie defence linesman, Ethan Westbrooks made the cut back in 2014 despite having a face tattoo. He said he got it to motivate himself as a player, and he is still playing into 2019 on the Los Angeles Rams roster. . One thing seems certain however, which is that an NFL tattoo prohibition is being more closely enforced against cheerleaders rather than players. This follows similar rules that seem to regulate everything that’s on view when cheerleaders are performing on the field, from their personal appearance and shape to their weight, with bans on body piercings and oddly intrusive and specific requirements like having to keep within a certain number of pounds of their “ideal weight”. Off the field requirements are said to include a prohibition against wearing sweatpants in public, with rules on whom cheerleaders may socialize with or date, rules about nail polish and jewelry, how to use social media, how to shave and how to correctly use tampons.
Sports team bans on tattoos seem for the most part, arbitrary. In Germany, one of the top Bundesliga soccer teams, Werder Bremen, banned tattoos back in 2011, in case the tattoos were to become infected and affect a player’s game. In 2004, Major League Baseball (MLB) told pitcher Justin Miller that he had to cover up his arm tattoos with long sleeves because of complaints they were distracting batters. This came to be known as the “Justin Miller Rule,” a reference to its whimsical nature. Since then the MLB appears to have backed-away from its tattoo-ban approach because tattoos among MLB players are ubiquitous. Additionally, most players in the National Basketball Association (NBA) now are heavily tattooed, and the body art on some of the players is taking intellectual property issues to a whole new level.
Copyright in the Artistic Work
An obvious first question when examining the intersection between the rights of a tattoo creator and the tattoo wearer is, who owns the tattoo? It would seem clear that once it is etched onto one’s skin, it is owned by the wearer. But just as buying a painting will confer ownership rights to the canvass, pigments and stretcher on which it is placed, the mere fact of buying the painting will confer no ownership of the copyright in the work itself. It is well known that ownership of the copyright, or any of the exclusive rights under a copyright, is distinct from ownership of the material object in which the work is embodied. Tattoos are no different.
Copyright in an original work of art – whether a tattoo or otherwise – in contemporary times is a creature of statute. Those rights, which originate with the creation and use of manuscripts through privileges and decrees and in modern Anglo-American times to the British Statute of Anne 1710, primarily are intended to benefit the author or publisher of the work, not the person who happens to own an embodiment of the work. Internationally these rights are standardized through international agreements such as the Berne Convention and regional harmonization laws such as European copyright directives. Depending on the jurisdiction in question, these benefits will be counterbalanced by concepts such as fair dealing rights or fair use exceptions or augmented by a requirement to protect the moral rights of creators. That said, a common thread for the purpose of this discussion is that ownership of the tattoo is separate from ownership of the copyright in the tattoo. This can present unique legal problems especially when the owner of the tattoo is a highly-visible media personality.
For example, under section 2 of Canada’s Copyright Act, although not specifically mentioning tattoos, an artistic work can include a drawing:
“artistic work includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works; (oeuvre artistique)”
Under section 3(1), copyright gives control over the right to reproduce the tattoo in any material form whatsoever:
“…copyright, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever… and includes the sole right… (e) in the case of any… artistic work, to reproduce… and publicly present the work as a cinematographic work, and (f)… to communicate the work to the public by telecommunication, and to authorize any such acts.”
Under section 27(1), it is an infringement to do, without consent, anything that only the copyright owner has the right to do:
“It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.”
Under section 14.1, the tattoo artist additionally has moral rights in an original tattoo:
“The author of a work has, subject to section 28.2, the right to the integrity of the work and, in connection with an act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous.”
And, under section 28.2, the moral rights will be infringed if the tattoo is used, without permission, in association with a product, service, cause or institution:
“The author’s… right to the integrity of a work… is infringed only if the work or the performance is, to the prejudice of its author’s… honour or reputation… (b) used in association with a product, service, cause or institution.”
Best Practice & Right Clearance Checklist
The tattoo industry has long-since developed informal guidelines against copying that are built around the notion that tattoos are unique. As a rule, tattoo artists will refuse to re-ink a client’s custom tattoo onto a second client. This appears to be rooted in notions of ethical duty, respect and implied contract. As one anecdote illustrates:
“I tattooed a rock star [with a custom design that incorporated his daughter’s name]. And I had his wife come in and ask for the exact same tattoo. “It’s my daughter too, I love the way you designed it.” And I told her “you need to call him and ask him. If you call him and he’s okay with it, then I’ll do it.” But because it’s a design we came up with together, it was an agreement that we had.”
In a more formal sense, best practice and errors and omissions insurance requirements for film and television typically will say that if an actor, entertainer or sports figure’s tattoo is going to be visible in any situation that is going to be monetized by way of photography, cinematography or videography, a written release or license needs to be obtained from the copyright owner that contains usual provisions as to it being perpetual, for the territory of the word, royalty-free, for use in all media now or hereafter known, etc. Ideally, an assignment of the copyright with a moral rights waiver would be obtained at or before the time the tattoo was done, so the tattoo could be displayed in any situation.
A rights clearance checklist could look something like this:
1. Identify all tattoos that could become visible;
2. Identify the authors of each original work (and the owners of any trademarks that might be depicted);
3. Ensure that the author of each work has assigned copyright and waived moral rights (and that the trademark owner has given consent); and
4. In the alternative, obtain a non-exclusive license to reproduce the work in any and all media.
However, in the real world, best practice is not always at hand. For example, the artist who inked the tattoo might not even own the copyright in the image. This is a common problem because often tattoos are made from stencils rather than being drawn directly onto skin. The work might have been copied from another tattoo. The tattoo already might have long-since been inked, where it is too late to get the rights papered-up without the media personality or their handler being extorted now for money; or the tattoo artist simply might have vanished. Absent solutions where a lawyer or in-house legal counsel can paper-up the usage, we are left with a situation where the problem can lay dormant until the tattooed person becomes famous. The greater the fame and visibility, the more the tattooed person and their team will become a target for an infringement claim.
Early Examples of Copyright-Based Tattoo Litigation
The first widely-known copyright infringement case involving a tattoo was filed in February 2005 as a result of a tattoo featured in a Nike television ad campaign. Tattoo artist Matthew Reed filed the lawsuit in Oregon against Nike, its advertising agency and NBA player Rasheed Wallace for a TV commercial that prominently featured the Egyptian-themed tattoo that had been inked on Wallace’s arm. At the time, Wallace had one of the more distinctive tattoos in the NBA. It is reported that Sports Illustrated for Kids previously had used it in a feature asking readers to match tattoo photos with the NBA players who wore them. But Reed sued when he became aware that Nike was featuring the tattoo in association with its products. The case later settled out of court.
In another example of early copyright-based tattoo litigation, a video game developer found itself sued over the depiction of a lion tattoo on a UFC fighter’s ribcage. THQ created the video game “UFC Undisputed” in 2010 featuring many UFC fighters. A fighter by the name of Condit, who had the lion tattoo, was added to the games system around May 2010. In February 2014, “UFC Undisputed 3” was released, also using Condit as a character. Both games featured a computer-generated depiction of Condit including a replica of his lion tattoo. The tattoo had been inked by tattoo artist Christopher Escobedo, who claimed copyright and had a US Copyright Office registration for it. The matter settled out of court, so we do not have access to the amount of money, if any, that changed hands on the settlement.
In 2011, Victor Whitmill filed a copyright lawsuit against Warner Brothers Entertainment Inc. for use of the tattoo he inked on Mike Tyson's face. The movie "The Hangover Part II" displayed a scene where Ed Helms’ character wakes up with Mike Tyson's tattoo on his face. Whitmill attempted to get a preliminary injunction to stop the film from being distributed. The injunction was rejected because in the balance of equities, the “very large” harm to Warner Brothers in stopping the film outweighed any harm to Whitmill, however, on the question of liability the judge found that Whitmill likely would win the case if it went to trial. The case soon settled out of court. The judge found no reasonable dispute regarding the copyrightability of tattoos and that the contract for the tattoo the artist had entered into with Tyson was “totally consistent and appropriate under copyright law.” The court went on to note that Warner had failed to obtain any kind of license to use the tattoo in the film.
Rick Genest p/k/a Zombie Boy, since deceased, was widely known for his very distinctive skeletal tattoos covering his entire body. On an early episode of the first season of FX’s “American Horror Story,” actor Evan Peters donned extremely similar skeletal body makeup and went on a shooting rampage. The potential lawsuit for the copyright infringement exposed Twentieth Century Fox Television to hundreds of thousands of dollars in copyright infringement damages and this resulted in the erasing or obscuring of Zombie Boy’s body art in future airings of the episode. The two parties come to an agreement to end the dispute. Similar to the Whitmore case, above, the key aspect of this case was that FX was using someone else’s body art. This is an important distinction for later cases, where the issue centres on whether a person may portray themselves, even if they carry the artworks of others on their skin.
The Value of a Tattoo Infringement
To date it appears that all tattoo-related copyright infringement cases either have been settled on a confidential basis or dismissed. Therefore, the value of a tattoo in a copyright infringement matter is far from certain. That said, in a recent case involving hip-hop artist Cardi B, whose real name is Belcalis Almanzar, the court questioned the worth of a tattoo that was said to be infringed by a look-alike tattoo on the cover of her controversial and critically-acclaimed 2016 debut mixtape, Gangsta Bitch Music Vol. 1. There, in a jurisdictional dispute where the claim had to meet a minimum threshold of value to remain in the Federal Court, the plaintiff struggled to prove that the infringement claim, if successful at trial, would be worth more than $75,000, with the issue being left undecided.
Balancing Copyright with Personality Rights or a Right to “Free” Skin
Videogame producers have struggled with how to depict tattooed players in sports-related games, especially after the games have transitioned to high-definition consoles. As of Madden NFL 15 released in 2014, Colin Kaepernick, quarterback for the San Francisco 49ers, was the only player with tattoos in the Madden videogame series. It was reported at the time from an interview with one of the line-producers for the game that the process of securing licences from all of Kaepernick’s tattoo artists had taken a “fair amount of work.”
Aside from the inconvenience of having to clear each and every tattoo on a heavily-covered celebrity, lies the right of the celebrity to be themselves. Previous efforts to explain this concept have involved notions of bodily property. In the United States, the authoritative copyright textbook, Nimmer on Copyright lent support to the idea that the human body should not be subject to copyright claims. From there, scholars have pondered whether the U.S.’s Thirteenth Amendment regarding the abolition of slavery could provide constitutional support. However, these arguments have not found much acceptance and the courts have expressed a willingness, on a case by case basis, to apply conventional copyright principles to decide these issues. That said, the nexus that remains undecided and still largely unexplored by the courts, is whether, and to what extent, it could be fair use, de minimis use, or an otherwise acceptable use perhaps through an implied license, to display one’s own ink – that has been made by another person – even in a monetized or widely-seen manner in the media, because essentially a person’s tattoos are incidental to the portrayal of that person generally.
Personality rights are the rights of an individual to control the commercial use of their name, image, likeness or other unique aspects of their identity. These are viewed typically as property rights. For example, one facet is the right to not be portrayed in a false light. It remains to be seen whether a court facing the collision of copyright and personality rights, might be persuaded, for example, that it would be condoning the false-light portrayal of an individual to deny the person the right to be seen with all their ink exposed.
The Terrain of Current Copyright-Based Tattoo Litigation
The cover of a videogame box itself previously has been the focus of a tattoo infringement claim. In December 2012 a suit was filed by Stephen Allen, a tattoo artist and owner of Crybabies Tattoo, against Electronic Arts Inc., Sports and NFL player Ricky Williams after EA used an image of Williams and his tattooed arm on the cover of the video game "NFL Streets". Allen conceded he knew at the time the tattoo was inked that Williams was an NFL player and that the tattoo likely would be seen on television, but he sued after he realized the tattoo was being depicted on the EA game cover. In response, Williams argued that he had commissioned the tattoo, paid Allen for the tattoo and also used other artists to assist in the creation of the original tattoo design. The complaint was discontinued by the plaintiff before a formal defence was filed, with costs to the plaintiff, indicating a settlement. This case also was the cause of an NFL Players Association recommendation that players get tattoo artists to sign a release of intellectual property rights when they make the tattoo.
In 2016, Take Two Interactive Software was hit with a copyright infringement lawsuit by Solid Oak Sketches for its depiction of LeBron James - tattoos and all - in its NBA 2K basketball video game. Solid Oak Sketches obtained the copyrights for five tattoos inked on three basketball players, including Lebron James’ tattoos. Take Two summarily moved to dismiss the case on two grounds. The main argument for dismissal was that for most of the game, one barely sees the tattoos and since they are such a small part of the game, the use should be considered de minimis. None of the parties have disputed that actual copying has occurred because the game seeks to portray James as he is actually seen. The issue is “whether the copying is actionable.” Take Two alternatively has put forward a fair use argument, which the court found to be too factually dense to determine without a trial. This is a current and ongoing lawsuit.
Take Two Interactive along with 2K Games Inc. currently are facing other tattoo-related claims. Tattoo artist James Hayden filed a lawsuit against Take Two for their depiction of LeBron James, Danny Green, Tristan Thompson and Kyrie Irving in the NBA 2k16 and 2K17 video games. The depiction of these characters all had copies of Hayden's tattoos on the individuals. This case is also ongoing. Tattoo artist Catherine Alexander also filed a lawsuit against Take Two for their character depiction of Randy Orton – tattoos included – in several iterations of WWE 2K. This matter is ongoing.
Tattoo Trademarks
It appears that the litigation of tattoos in the media is not just limited to celebrity tattoos. Sam Penix, a coffee shop owner in New York was threatened with a trademark Infringement lawsuit in 2013 based on the “I ©NY” trademark owned by The New York State Department of Economic Development. Penix has “I (coffee cup) NY” tattooed on his fist, and the design is featured as his coffee shop’s logo between the words “Everyman Espresso.” In order to avoid being sued, Penix agreed to several terms, including some restrictions on how his fist could and could not be photographed.
Sports teams and leagues have long-since prohibited players from displaying tattoos that feature the trademarks of entities that are not official sponsors. For example, in 2001, the NBA stopped Rasheed Wallace from accepting a $15,000 offer from a candy company to wear a temporary tattoo, because it would have conflicted with the exclusive license given to the league’s official candy sponsor, Nestlé. Similarly, in 2009, after NBA player Marcin Gortat had signed an endorsement deal with Reebok, it had required him to cover up his Nike “jumping man” tattoo. More recently, in 2018, another NBA player, J.R. Smith, has been forced to cover up a large “Supreme” tattoo on his calf during games. The reasoning is that it violates the official sponsorship given to Nike because Supreme is a competitor in the sports apparel industry. These types of restrictions seem well-grounded in contractual principles that protect the expectations of brands entering into sponsorships and endorsement deals.
Conclusion
As the illustrations on one’s skin attract legal implications in copyright and trademark law, one of the main aspects of these types of claims is the cost and uncertainty of litigation for tattooed entertainers and sports figures, and their production companies, licensee and teams. Hopefully, one of the current US cases involving videogames will go to trial and produce a well-reasoned precedent that can provide greater certainty.
While it appears obvious that conventional intellectual property laws are well suited for determining a predictable result where a person with ownership of the copyright in their tattoo finds the tattoo has been copied without authorization, there is much room for uncertainty about the result where there is a clash between the rights of a person claiming ownership of the copyright in the tattoo and the rights of the person wearing the tattoo.
