Tattoos On Videogame Avatars—How Broad Is The Implied Copyright License?

A famous athlete or musician licenses his or her persona to a videogame developer.  The videogame developer creates and releases a videogame featuring an avatar of that athlete or musician, including the athlete’s or musician’s distinguishing characteristics—such as tattoos.   A tattoo artist files a lawsuit against the videogame developer for copyright infringement, alleging that the reproduction of his or her original designs on the celebrity’s game avatar violates the tattoo artist’s exclusive rights under the Copyright Act to reproduce, distribute, and create derivative works of the tattoo—regardless of the celebrity’s grant of permissions.  What are the respective rights of the celebrity, the videogame developer, and the tattoo artist?  The question remains largely unresolved.

In November 2012, such an action for copyright infringement was filed against game developer THQ, Inc. in Arizona federal district court.  THQ’s game series “UFC Undisputed” allows players to fight as UFC welterweight champion Carlos Condit.  True to Condit’s actual appearance, Condit’s game avatar includes an elaborate and original lion tattoo on his ribcage which is conspicuously viewable during game play.  The tattoo artist behind the original lion tattoo design commenced the copyright litigation, alleging that he never assigned the copyrights to the design to THQ or to Condit, and that Condit had an implied license to publicly display the tattoo only on his own body (and not on a graphical reproduction).  (Escobedo v THQ, Inc., No. 12 Civ. 02470 (D. Ariz. Nov. 16, 2012).)   Before the Court could reach the merits and decide the Parties’ relative rights, the litigation was indefinitely stayed.

Are Tattoos Copyrightable?

There appears no reasonable question at this point that original tattoo art is copyrightable—a truth confirmed in the 2011 Mike Tyson/ “Hangover 2” litigation.  In April 28, 2011, tattoo artist S. Victor Whitmill emerged from relative anonymity and filed a complaint for copyright infringement in Missouri federal district court, alleging that the appearance of his original tattoo design on Ed Helms’ character in “The Hangover 2” constituted copyright infringement, because (1) the tattoo—originally applied to Mike Tyson’s face—was his original design, (2) Tyson had expressly acknowledged Whitmill’s ownership of the tattoo design in 2003, as part of an agreement Tyson signed when he got the tattoo, (3) Whitmill had “never been asked for permission” by anyone to reproduce the tattoo, and (4) Whitmill held a valid copyright registration of the tattoo (appended to his Complaint and effective April 19, 2011), which reflected his registration in and to “artwork on 3-D object” (i.e., Mike Tyson’s head).

Whitmill filed a Motion for Preliminary Injunction to prevent timely release of the film—a Motion which, if granted, would have cost Warner Brothers estimated damages in the tens of millions of dollars.  On May 23, 2011—mere days before the film’s scheduled wide release—the Motion was denied.  The Court strongly indicated, however, that while the relative balance of hardships compelled denying Whitmill’s Motion, it appeared Whitmill was likely to succeed on the merits of his copyright claims.  The Court’s reasoning on this point remains largely undisturbed.

What Is The Scope Of A Celebrity’s Implied License To Use And Display His Or Her Tattoos?

Tattoo recipients of necessity have an implied license in and to the original tattoo art applied to them, but what is the scope of that implied license?  On this subject, Escobedo alleged that (1) he “impliedly licensed Mr. Condit to publicly display the Lion Tattoo on his body, including at UFC fights and other UFC-sanctioned events,” and (2) Mr. Escobedo “did not authorize Mr. Condit, or any other party, to copy or make a graphic representation of the Lion Tattoo.”  Mr. Condit’s purported delineation his “implied license” to Mr. Condit to display or exploit the tattoos on his body is a proposition so far undecided in law.

A universal legal definition of an “implied license” in the tattoo industry might have greatly availed the defense in Reed v. Nike, Inc., No. 05 Civ. 198 (D. Or. Feb. 10, 2005).  In Reed, a tattoo artist alleged copyright infringement of his original tattoo design when the tattoo was depicted in an advertising campaign for Nike, including in a television commercial featuring a close-up of the tattoo.  Unlike the Tyson case, however, the tattoo remained on the arm of NBA star Rasheed Wallace—Reed’s tattoo client.   Indeed, Wallace himself was named a defendant as a “contributory infringer” (for inducing Nike’s infringement by representing himself as the exclusive owner of his tattoo), or alternatively, as a “co-owner” obligated to account to Plaintiff for his revenue from the ad campaign.  The case was resolved by confidential settlement –but only after eight months of litigation.

What This Means To The Videogame Industry.

A celebrity’s right to exploit his or her own name, photograph, or likeness (including distinguishing features) is well-recognized in law.   The suggestion that a tattoo artist can interfere with or supersede a celebrity’s license of his or her persona to a videogame developer  appears to run contrary to statute, and conspicuously runs contrary to intuition and common sense.  Nevertheless, so far no Court has squarely decided or delineated the issue.   Videogame developers should therefore continue to be mindful of these potential claims as they continue to incorporate celebrities with a tattoo (or worse—many tattoos) into their new releases.