IP Law Daily, COPYRIGHT NEWS: Video game maker could use player tattoos in its avatars, a jury finds, (Apr 22, 2024)

By Matthew Hersh, J.D.

The artist who inked his work on basketball stars could not object if those tattoos showed up in the game.

A tattoo artist who inked his work on the bodies of Lebron James and other basketball stars implicitly licensed a video game maker to depict the tattoos as part of its highly realistic avatars of those players, a federal jury has found. The licensing verdict, which allowed the jury to avoid having to decide on the fact-intensive defense of fair use, among others, spares the video game maker substantial potential damages and may set a precedent for other litigation of a similar nature over the use of tattoos (Hayden v. 2K Games, Inc., April 19, 2024, Boyko, C.).

The lawsuit arose when Take-Two Interactive Software, Inc., released the popular video game NBA 2K. That video game depicts players from the NBA in interactive simulations and allows players to control realistic avatars of over 400 NBA players—so realistic, in fact, that the avatars for LeBron James and two other players contained a depiction of their tattoos. This did not sit well with James Hayden, the tattooist who created the inkwork in question. The tattoo artist filed a copyright infringement lawsuit against the game maker as well as its distributor, claiming that it had used six of his designs without permission.

The case went through many rounds of preliminary motions before trial. In March 2019, the court found that the artist’s unjust enrichment claim was preempted by the Copyright Act. In September 2022, the court found that the artist’s work was original and had been fixed in tangible form by its permanent inking on players’ bodies. The court also denied the game’s maker’s motion for summary judgment on its fair use and implied license defense. On the implied license question, the court noted, nobody disputed that by creating the tattoos at the player’s behalf, the artist gave those players the right to display his work. But a jury would have to decide whether the tattooist intended to extend the license to the game maker’s reproduction of the tattoos in realistic-looking avatars of those players.

The case was narrowed substantially in a further set of preliminary motions. The game maker pointed out that the artist had failed to disclose, when filing his original registration applications, that four of his designs were based on underlying artworks created by other authors. That led the court to refer the matter to the Copyright Office for it to determine whether the registration was valid. In August of last year, the Office concluded that it would not have granted the original registrations had it known of the underlying artwork. To be sure, the Office noted, the artist had since filed supplementary registrations demonstrating that he added sufficient new material to the underlying works to warrant registration. But that did not help the artist, the court later found, because the supplemental registrations came too late to form the basis of this lawsuit. Trial would go forward only on the remaining two designs.

In this now-narrowed case, the jury found for the game maker. The only two tattoos left in the case were tattoos that the artist drew on Lebron James. The jury found that the game maker had proven by a preponderance of evidence that it had an implied license to use those tattoos in the game. In so doing, the jury was able to skip four other questions it would have to answer, including whether game maker infringed on the artist’s exclusive right to the tattoo copyright, whether the game maker’s conduct was either fair or de minimis right, and whether the artist waived his rights.

The Case is No. 1:17-cv-02635-CAB.

Attorneys: Brandon Earl Brown (Calfee, Halter & Griswold LLP) for James Hayden. Joshua C. Berlowitz (Kirkland & Ellis LLP) for 2K Games, Inc.

Companies: 2K Games, Inc.

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