By Jesse M. Brody, Partner, Advertising, Marketing and Media
The question of whether infringement occurs if a copyrighted tattoo is shown during a video game may soon be answered, after a federal court judge in New York moved a lawsuit forward earlier this week.
Solid Oak Sketches filed suit after its copyrighted tattoos—found on athletes including LeBron James and Kobe Bryant—were visible in Take-Two Interactive Software's video game "NBA 2K."
Take-Two countered, seeking a declaratory judgment that the visibility of the tattoos was both fair use and a de minimis use. Solid Oak moved to dismiss the counterclaims, but U.S. District Court Judge Laura Taylor Swain decided to let the parties battle it out in court.
With respect to Solid Oak's protection of the "Lion's Head Tattoo Artwork" found on James, the court said a conclusive answer was necessary to avoid future litigation. "Solid Oak has asserted infringement of this copyright against Take-Two in the past, giving rise to a 'reasonable apprehension' that Solid Oak will sue Take-Two if it continues to produce games depicting that tattoo, and 'the validity of the [copyright] may very well be placed at issue in further litigation between the parties,'" the court wrote. "Declaratory judgment on this issue in this action would thus 'serve a useful purpose' and 'offer relief from uncertainty.'"
Further, the defendant has a "substantial interest" in the resolution of the de minimis use and fair use counterclaims, the court added, "because Take-Two releases the NBA 2K game annually and Take-Two depicts other tattoos—including those that have been subjects of Solid Oak's previous demands—in a similar manner," the court said. "Because resolution of these disputes issues would also 'serve a useful purpose' and 'offer relief from uncertainty,' the motion to strike these counterclaims is also denied."
To read the memorandum order in Solid Oak Sketches, LLC v. 2K Games, Inc., click here.
Why it matters: The court's denial of the motion to dismiss the defendant's counterclaims moves the case one step closer to answering the question of whether a license is necessary to visually depict a copyrighted tattoo in a video game, movie or television show. The issue first gained notoriety when the tattoo artist behind Mike Tyson's face tattoo sued to stop the release of "The Hangover Part II" because the movie featured actor Ed Helms sporting the distinctive face tattoo. That case settled, leaving the question unanswered—for now.