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Tattoos, Video Games & Copyright Law: Beauty May Only Be Skin Deep … But Does Copyright go to the Bone?

Fasken
Reading Time 5 minute read
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Intellectual Property Bulletin

What does a former heavy weight boxing champion, a professional wrestler and an NFL quarterback have in common? Yes, they are all professional athletes, but there is something else. All have been involved in disputes over the right to reproduce their tattoos! With the increasing prominence of "inked" athletes and celebrities, questions regarding copyright in tattoos continue to arise. Who owns the right to reproduce these tattoos? The answer may surprise you.

One of the first cases to raise this issue involved tattooist S. Victor Whitmill who alleged Warner Bros. Entertainment infringed his copyright by reproducing a tattoo he originally designed for boxer Mike Tyson on another actor in the film "The Hangover Part II". Shortly thereafter, Colin Kaepernick's tattoos made an appearance in the Madden line of football video games in 2015, only after Kaepernick allegedly obtained permission from the tattooists to reproduce the tattoos at the request of the NFL's Players Association ("NFLPA") and the video game maker EA Sports. More recently, Illinois tattooist Catherine Alexander filed a lawsuit against World Wrestling Entertainment (the "WWE") and 2K Games alleging copyright infringement for the use of professional wrestler Randy Orton's tattoos in a video game.

Is it possible that when Tyson, Orton and Kaepernick got tattooed, or anyone else for that matter, they didn't get all the rights necessary to reproduce their tattoos?

Copyright provides the owner of artistic, literary, dramatic or musical works with a set of exclusive rights, including the right to the reproduction of the work in any medium. These rights vest in the author of the work and include the right to produce and reproduce any translation of the work as well as the right to prevent others from doing so. According to the Canadian Copyright Act (the "Act"), copyright subsists "in every original literary, dramatic, musical and artistic work" that is fixed in a material form. Given that many tattoos are complex and clearly require a level of creative and esthetic judgment, they would reasonably be considered artistic works under copyright law. Assuming that the tattoo was not copied from another work, it would also be considered original. Since a tattoo inked on human skin is in a "material form, capable of identification and having more or less permanent endurance", there is no reason why human skin should not be an appropriate medium for fixation. In defining "artistic work", Section 2 of the Act uses the word "includes", indicating an open list of possible mediums on which a work may be fixed. Where a tattoo meets all of these criteria, it is reasonable to conclude that a tattoo, as applied to human skin, would be considered a copyrighted work. Who then has the right to reproduce that tattoo?

Assuming then that the tattoo artist designs and creates the tattoo, it is the tattoo artist (the "tattoo-or") who is the author and therefore, the first owner of copyright. The fact that the person who received the tattoo (the "tattoo-ee") has paid for the tattoo, and is obviously the owner of the physical tattoo, does not mean that copyright is automatically assigned from the tattoo-or to the tattoo-ee. Under Canadian copyright law, independent contractors retain copyright unless there is an explicit assignment of the copyright in the artistic work. At best the tattoo-ee has an ownership right in the physical tattoo but does not have the right to reproduce the tattoo in any other medium without the consent of the author, namely the tattoo artist.

In addition to the ownership rights that the author may have, Canadian copyright law provides the author with a set of "moral rights." These moral rights are not assignable and protect the dignity and integrity of the author's work by restricting what the ultimate owner can do with the work once it passes from the author. The author (e.g. the tattoo-or) therefore could exercise his or her moral rights to prevent the tattoo-ee from altering the tattoo to the prejudice of the tattoo-or's honour or reputation. The tattoo-or may also prevent the tattoo from being associated with particular causes, such as violent video games or movies with particular themes or points of view. 

In order to regain control over the tattoo, the tattoo-ee would need to argue that there is some kind of implied licence to use and reproduce the tattoo by virtue of the tattoo being part of the tattoo-ee's skin. This would allow companies wishing to reproduce the works to argue that the tattoo artist and the tattoo-ee have between them an implied licence that allows the tattoo-ee to be reproduced in digital form with his or her tattoos. When dealing with high-profile individuals such as athletes or actors especially, it would seem that at least some form of an implied licence (if there isn't already an explicit licence) is necessary with regard to the tattoo-ee being able to "use" the tattoo. Surely, no tattoo artist could expect that an entertainer obtain his permission before being photographed with the tattoos. Indeed, Tyson's tattooist Victor Whitmill had no issue with Tyson himself appearing in the Hangover movie, his issue was specifically in regards to the reproduction of his original design on actor Ed Helms.

Absent any kind of implied licence, and unless there is a specific assignment of copyright and waiver of moral rights, it would appear that, while the tattoo-ee owns the tattoo itself and can "use" the tattoo, it is the tattoo-or who controls the right to reproduce the tattoo.

What does this mean for those wishing to reproduce the tattoos in films and video games? As tattoos become more and more ubiquitous, it will be necessary to address these issues to avoid any future problems such as those encountered by Tyson, Orton and others. To assist, we have put together a "clearance" checklist to help content providers and developers navigate copyright issues that could arise.

 "Clearance" Checklist

  • Identify any and all potential artistic, literary or musical works that are to be used, including any tattoos;
  • Identify the author(s) of each original work (internal or third party);
  • Ensure the author(s) of each of the above works have assigned copyright and waived all moral rights;
  • If you are unable to obtain an assignment and waiver, obtain a non-exclusive licence to reproduce the work in any medium and in any manner (e.g. digital and non-digital);
  • As a best practice, require that all employees or independent contractors who develop copyrighted works sign an agreement in which the employee/independent contractor expressly agrees to waive all moral rights and transfers and assigns all IP rights in the work to the employer.

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