Take-Two Says Tattoo Artist Can't Get Statutory Damages Because He Only Registered Copyright In 2015

from the hmmm dept

Mon, May 23rd 2016 11:23pm — Timothy Geigner

Back when I first wrote about the copyright lawsuit between a tattoo artist and Take-Two Software, makers of the highly successful NBA2K basketball series, over the faithful depiction of LeBron James' image including his ink, I had been hopeful that perhaps this case could be a step towards resolving whether fair use applies when presenting images of people with tattoos in creative works. And that might still happen, but the defense Take-Two has decided to start things off with won't do the trick. Rather than asserting the work's status as fair use, the video game maker has led with a challenge to whether the tattoo artist can claim statutory damages based on when he had registered the copyright for the tattoos in question. It's a play on a technicality, one which seems to strangely play on what counts as an independent work.

Solid Oak Sketches had sued for damages nearing $1.2 million, claiming eight works had been infringed upon in the game NBA 2K16, including tattoo designs for LeBron James and two other players. According to Take-Two's most recent filing with the court, Solid Oak Sketches registered the copyright for those tattoos in 2015. The game company's argument is that it has been depicting those players and their tattoos since 2013, therefore there is precedent that statutory damages are not in play.

These claims for damages, however, are precluded by 17 U.S.C. §412. As is clear form the face of the Amended Complaint and its attachments, Take-Two has depicted Mr. James, Mr. Martin, and Mr. Bledsoe -- and their tattoos -- in its NBA videogames since at least 2013. This is years prior to the registration of the tattoos with the U.S. Copyright Office in June and July 2015... Here, where the same work has allegedly been infringed by the same defendant in the same manner since 2013 -- long before registration -- binding Second Circuit precedent dictates that statutory damages and attorneys' fees are unavailable.

In other words, because the complaint is over infringement that is essentially the same as has been occurring two years prior to the registration, precedent indicates that statutory damages and attorneys' fees should not apply. It's an interesting argument, though I wonder if it isn't without its pitfalls. Does Take-Two mean to suggest that in some way each years' NBA 2K game is not a separate work and publication. I am sure that is not what they are trying to argue, but arguing that the depiction of individual players within the game are essentially the same depiction for the purposes of combating this action leads us down that path.

Regardless, it does certainly seem to demonstrate that whatever harm Solid Oak Sketches wants to claim in their suit seems silly. Were it so injurious, it brings the question as to why it didn't act to protect itself in all the years previous in which similar alleged infringement is supposed to have occurred. Did it suddenly only become a problem in 2016?

The filing also makes it clear that Take-Two plans to also attack the underlying nature of the infringement claim in the future, which likely means it will assert a fair use argument. I hope it does. That would be the more important precedent to set here.

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Filed Under: basketball, copyright, lebron james, registration, tattoos
Companies: solid oak sketches, take two software

18 Comments

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Will, 23 May 2016 @ 11:32pm

Stupid question, but...
...wouldn't tattoos be considered a commissioned work, and thus property of the person who commissioned them, not of the artist creating the work? IANAL but I could've sworn there was something along those lines in the legal code. Someone fill me in here?
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- Anonymous Coward, 24 May 2016 @ 1:46am
  
  Re: Stupid question, but...
  Maybe it can be what ever the two parties agree upon? I commission a design, the artist can keep the copyright and I'm the only one that ever gets to use that design.
  
  Or any combination of those: I design AND tattoo the artist and he keeps the copyright, or he designs, a third person tattoos and my lawyer gets the copyright, or I get blackout drunk and wake up with a tattoo. How designed it? Who tattooed it? WHO OWNS THE COPYRIGHT?!
  
  This last paragraph was, of course, a joke. For the serious discussion, look above it.
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  - Will, 25 May 2016 @ 11:46pm
    
    Re: Re: Stupid question, but...
    Ah, yeah, that makes sense. And I'll bet most tattoo parlors have boilerplate agreements to that exact effect, now that I think about it. Thanks~
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- Violynne (profile), 24 May 2016 @ 4:39am
  
  Re: Stupid question, but...
  Sometimes. Many tattoo parlors I've seen have art books people can select from.
  
  So long as the final image isn't a copy from the book, the tattooee claims copyright.
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Zem, 23 May 2016 @ 11:38pm

I want to draw an interesting parallel to my own profession, architecture. Architects work often appears in videos, movies and computer games based on real life locations.

Does the architects get paid for this, no. Should the architect get paid for this, no.

The architect get paid for their work at the time they create it. They do not own the physical building or the site it is built on. And for the most part that building is always viewable by the public.

The same can be said for these tattoo's. The studio gets paid in full, up front. They do not own the canvas. The location of the tattoo's is such that they are viewable by the public.

It will be interesting to see how this plays out.
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- Roger Strong (profile), 24 May 2016 @ 10:13am
  
  Re:
  Don't count on the law to work that way. People do get threatened with copyright lawsuits when they take a picture of a building. Techdirt had a good story on the issue a year ago: EU Copyright Reform Looking At Restricting Outdoor Photography:
  
  > 16. Considers that the commercial use of photographs, video footage or other images of works which are permanently located in physical public places should always be subject to prior authorisation from the authors or any proxy acting for them.
  
  Examples are given where royalty collection agencies have already pursued "unauthorized" photographs of outdoor structures and had pictures taken down from Wikipedia.
  
  It's not just architecture. If you consider your chair design to be a work of art, and one of the countless chairs you sold over the years shows up in a stock photo database, you can sue the stock photo company and win.
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scotts13 (profile), 24 May 2016 @ 4:59am

Preposterous
Aside from the work for hire aspect, this "artwork" has the unique quality of becoming part of an individual's body. How can a third party be allowed to hold any control over when and if that person's body is viewed or depicted?
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Tin Foil Hat, 24 May 2016 @ 5:07am

G and O
Isn't this a similar situation to google and oracle?
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Keroberos (profile), 24 May 2016 @ 6:13am

This is something that needs to be addressed higher up.
What the tattoo artist is arguing is silly. He's saying he owns the copyright on any depiction of a person that shows his tattoo. This is wrong. According to copyright law as it stands now, the only person who can own the copyright on any image of a person is the person that created it (most images depicting people would be illegal if this were not the case). This can not change. If the tattoo artist wins, he can also make the claim that he owns the copyright of any image that shows one of his tattoos. That would mean he had some copyright claims on the filming and broadcasting of the games that depict his work plus any other image showing his work. This would make the filming or photographing of anyone that is visibly showing a tattoo a nightmare, because I guarantee you if he wins it will open the floodgates for all kinds of copyright claims by tattoo artists.
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Anonymous Coward, 24 May 2016 @ 6:53am

Playing plaintiff's advocate for a moment...
Were it so injurious, it brings the question as to why it didn't act to protect itself in all the years previous in which similar alleged infringement is supposed to have occurred. Did it suddenly only become a problem in 2016?
Perhaps the tattoo company only became aware of the depiction very recently. Depending on their personal interests, they may not have been aware that their past clients were depicted in the games, or may have been aware but believed that the in-game depictions were not sufficiently detailed that the tattoo was included. If they thought that the in-game depictions were little more than generic humanoids that had floating captions and performance statistics that referenced real players, they would not expect that the tattoo would be visible to people playing the video game.

Of course, if they only recently became aware of the harm, one could reasonably ask how much harm they really suffered. If they were seriously harmed by the alleged infringement, then they should have noticed something was wrong years ago, even if they only recently figured out that the root cause was this particular alleged infringement.
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scotts13 (profile), 24 May 2016 @ 7:06am

This could be the end of the tattoo industry
"I'd show you my cool new tattoo, but I just can't afford a public performance license from the artist."
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Anonymous Coward, 24 May 2016 @ 8:45am

Anonymous64 just loves it when copyright law is enforced.
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Anonymous Coward, 24 May 2016 @ 9:12am

I recalled that we'd had a discussion like this years ago (a little more than 5 to be exact):

https://www.techdirt.com/articles/20110408/03173713822/who-owns-copyright-tattoo.shtml

I'm of the opinion that unless an agreement is reached between the artist and the customer and put down on paper, the owner of the copyright is the person who designed the tattoo, with the caveat that the customer gets an implied license to depict the tattoo and be depicted with the tattoo since doing otherwise would be a counterfactual representation. Or maybe tattoos by themselves shouldn't be subject to copyright.
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amoshias (profile), 24 May 2016 @ 10:17am

I will admit...
I'm really surprised that this is an issue at all. I would have assumed that when you're someone as fantastically wealthy as James, who literally makes his living licensing the depiction of his body, that you don't get a tattoo without signing a contract with the artist. I would further assume that somewhere in very-rich-people-land there's an echelon of tattoo artists who are familiar with these issues and SIMILARLY want to work out this kind of stuff beforehand, because "I do tattoos for LeBron James" seems like something which is probably worth a LOT of money.

Further further, even if I'm wrong (which I obviously am) how can a long-shot suit worth a million bucks be worth it for these people? Let's say they settle with Take Two for some reasonable fraction of that - they're still trading off any possibility of future business.

Then again, a search for "solid oak sketches" turns up nothing but references to this (and another) suit... no website. Maybe they did the tattoos a long time ago, before James became famous or something...
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Maurice Ross, 24 May 2016 @ 1:03pm

Statutory Damages and Attorneys' Fees
This is not a mere procedural victory. The defendant is raising a critically important substantive issue. Copyright protection exists even without registration. But under the 1976 Copyright law, registration is still encouraged. Registration is a prerequisite for filing suit for infringement. Further, copyright law provides that unless registration occurs (or is at least applied for) within three months of publication, the copyright owner loses the right to statutory damages and attorneys fees. Without registration on a timely basis, most cases become worthless because actual damages are usually low or non-existence (most infringements cause no economic harm). Presenting this defense is no less important than a fair use defense because Congress wisely required copyright owners to register on a timely basis or else forego their rights to meaningful damages. This is a significant deterrent to the prosecution of trivial cases of infringement, and is one of the main ways in which Congress has protected defendants against trivial claims. In many ways this is no less important than a fair use defense.
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Anonymous Coward, 24 May 2016 @ 4:08pm

Plastic Surgeons
How about "art" created by plastic surgeons? Won't somebody think of the poor surgeon artists?
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Coyoty (profile), 24 May 2016 @ 7:01pm

Skin Trade
A reasonable person would know that a famous person with tattoos is going to be shown with them, either in photos or artwork. If the tattoo artist, who should have known that as part of his business, put the art on the celebrity's body without getting compensation for future portrayals, then he was authorizing the free distribution of those images in the celebrity's portrayals. He has given up his claim for control and compensation.
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aidian, 24 May 2016 @ 9:38pm

it's smart move...
...by the game company to try and avoid a fair use defense. Fair use is so poorly defined with no bright line test, so it's always risky. Even in a clear cut fair use case it's going to require a bunch of hours of lawyer's time - billable hours -- to decide. It's the smart move to try and beat it some other way even if you're sure you've got a strong fair use defense.
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