LeBron's Ink: Legal Explorations of Tattoo Copyrights #207

In this episode of The Screen Lawyer Podcast, host Pete Salsich explores the legal complexities of tattoos and copyright law. He discusses a recent lawsuit where tattoo artist James Hayden sued LeBron James and 2k Games for featuring his designs in a video game without permission. Drawing from his experience in a similar case involving Mike Tyson's tattoo and The Hangover Part II, Pete provides insights on the jury's decision. Tune in for his analysis, and don't miss out on understanding the nuances of this evolving legal landscape.

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Transcript

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So tattoos and copyrights are back in the news these days for the first time, prominently since the case I was involved in years ago. Victor Whitmill versus Warner Brothers Studios involving Mike Tyson's tattoo and Ed Helms face in The Hangover Part two. This recent case involving LeBron James charts some new territory, and we're going to dig into that on this episode of The Screen Lawyer Podcast. Hi there. Welcome to The Screen Lawyer Podcast. I'm Pete Salsich, The Screen Lawyer. And on this episode of the podcast, we're going to dig in a little bit to an interesting area of law that I've had the good fortune to be involved with for a number of years, and that involves tattoos and copyrights. So let's set the stage a little bit. A number of years ago, you all may remember the movie Hangover Part Two, that of course, that hangover franchise Hangover Part two at the time it was released, was the largest grossing comedy of all time, and it famously each hangover movie famously started with the Ed Helms character waking up after a night of binging to find that some part of his body had changed. In the second movie, he woke up with a tattoo that was an exact copy of the tattoo that was famously on boxer Mike Tyson's face. And you may recall, and this will be important in our discussion in a little bit. Mike Tyson is in The Hangover movies. He was a participant in those movies. So that means, of course, the joke was very funny. You wake up with a tattoo, it looks like Mike Tyson, etc. etc. goes on. Great success. Well, interestingly enough, when that movie was being released and actually prior to its release, in the marketing lead up that spring, there were all sorts of merchandizing opportunities that came out, including the picture of Ed Helms face with the Mike Tyson tattoo and this sort of chagrined look on his face on the Big Gulp at 7-Eleven, on massive billboards everywhere. It was, in fact, the key joke that was used to market the film. So that spring, Victor Whitmill, tattoo artist who put the tattoo on Mike Tyson's face originally in Las Vegas years earlier, was living in a small Missouri town at the time, running his tattoo business. Quiet life, very happy, and walks into the 7-Eleven and sees the Ed Helms face on the Big Gulp. And he knows that's his tattoo, and he immediately know something's wrong. No one ever contacted me about this. That's my original work. And he also didn't particularly wasn't a big fan of The Hangover movies and just the way all of that was portrayed, it just struck him as wrong. But he wasn't sure whether he could do anything about it or what to do. Long story short, he found his way to our law firm in Saint Louis, and my partners, Michael Kahn and Jeff Gerber and I, we took the case and recognized that this was copyright infringement because, you know, in art, we argued that while the tattoo was on Mike Tyson's face, Mike Tyson was allowed to go around the world. But the moment Warner Brothers made a copy of that tattoo and put it on Ed Helms face, that was infringement because they did so without the permission of the copyright owner, Victor Whitmill. So, you know, stepping back into copyright law when you are the owner of a copyright, you own the you're the exclusive owner of certain rights. You are the one that gets to decide, for example, whether to distribute that copyright, whether to give it away, sell it, whether who can make derivatives, who can make additional copies. All of those are your rights. And the copyright owner can grant licenses to those rights, can grant licenses to some, but not all. But they control those rights. So if someone makes a copy and puts it on something else, that's infringement. And when they do so in something like a movie, well then perhaps that's a pretty significant infringement in terms of the dollars involved. And then when they do it and use that infringed work to sell the movie to market the movie, that's even more egregious if they do so without permission. And this is a fairly well understood principle in copyright law, for the most part. But what made our case unique and different was this was the first time that the copyrighted work was a tattoo, and that was what was put forward in the case, and it really drew a lot of uproar in the media and fans of the movies. For example, in the tattoo community, in lots of different places because it started to elicit this, you know, well, are tattoos copyrightable? Well, what does that mean? You know, people who had tattoos? I have a tattoo. Do I need to be worried about what if I, you know, can I make a change? Let's say I have a tattoo and I want to add to it. I go to a different tattoo artist. Do I need to get the permission of the original tattoo artist to make some changes? You know, and most people, when they get tattoo, they're not thinking about copyright law. But tattoo artists are artists. They are creating works. Now, if they create a tattoo because you walk in there and you bring something you drew and they just copy it, well, then that's not their work because it's not an original. They use something that you had permission. You get a tattoo of, you know, something that's geometric shapes or a butterfly or whatever, and there's a million versions of it. Chances are there's not something that's particularly original enough to warrant to copyright. Those are different issues. But when a copy, when a tattoo is genuine, an original expression that does have copyright protection and the owner of the copyright is the human being who reduced that idea, that design into a tangible form of expression, fixed it tangibly in time by putting it on the skin of the other person that's now fixed. It's a tangible form of expression. You can touch it on their skin, you can see it there. That is all that is required to create a copyright. So at its core, I don't think there's any real doubt there. In fact, there is no doubt anymore, legally, that copyright the tattoos are copyrightable. They enjoy copyright protection if they fit the other requirements of originality, etc. to be copyrighted. But when we filed this lawsuit because of the nature, frankly, because of the dollars involved, to be honest, it Warner Brothers really had to make try to make certain arguments. And the first argument they tried to make is that tattoos are not copyrightable in and of themselves, because and they tried to make some other arguments in the case, but that was the main one. They tried to argue because and they actually even got, one of the Nimmer professors. And for the lawyers out there, particularly the intellectual property lawyers, you all probably had to read, maybe you even have copies of Nimmer On Copyright, the treatises that are considered the, you know, largely the definitive, expert opinion on copyright law. Well, one of the members was an expert for Warner Brothers in the case, and he actually advanced an argument that tattoos are not copyrightable, even though earlier in one of his treatises, he had said that they were. But as an expert in this case, he was opining that they weren't. And his arguments had to do with the. Essentially, if the copyright was recognized, then that would impose all these limitations on the human being living in the world, and even drew examples to branding and slavery back in the time when when slave owners would put a brand on a human's body, the enslaved person's body, to mark them, and tried to argue that somehow, if the court recognized a copyright in this particular case, that that was akin to, I guess you'd say, enslaving Mike Tyson, limiting Mike Tyson's ability to walk around in the world, to be photographed being a movie, all these things where the argument that he was trying to argue. So we had to counter that argument as a premise to getting forward with our case and what we ended up realizing after doing the research, and I was heavily involved in the drafting on this particular argument, was that there's an implied license that gets created when the tattoo artist puts the tattoo on the human being. And so this is an element of copyright law that is kind of nuanced and took some briefing and argument. But ultimately we came up with the argument that proved successful in the case. And it goes like this. So we've talked in the past about, how copyrights cannot be transferred. Ownership in a copyright cannot be transferred unless it's in writing. So that's why we have worked for hire agreements. When we hire someone to create a new work and we want to own it, or maybe our client is going to own it, we have to do it as a work for hire. That has to be in writing. If someone assigns ownership of a copyright from one party to another in term and in condition of a sale or some other kind of a transaction, that transfer of ownership, that assignment has to be in writing or else it's not recognized under copyright law. So that's a transfer of ownership. But what we're dealing with here isn't an ownership transfer. It's a permissive use. It's a license. It is a different contract. It is a grant of permission can be exclusive or non-exclusive. It can be to only these two of the six rights or whatever. But it is still a permission, and we always recommend that copyright licenses be in writing as well, because that's how you can tailor the scope. That's how you can determine if royalties need to be paid, whatever. But the law recognizes that the conduct of the parties in certain circumstances can create an implied license, even if it's not written down, even if it wasn't discussed. And so what the law recognizes is there's three conditions in that circumstance. These are going to be relevant in the case we're going to talk about in a second. The first is that the person who's going to end up with the tattoo on their body is in the in the position of the licensee. They show up and they request that the other person, the tattoo artist, create a new work. That's the first. So we have that. In that case, Mike Tyson walked in to Victor Whitmill's studio, requested the tattoo be put on his his face. In the most recent case, LeBron James went to a tattoo artist and requested that certain tattoos be put on his arms and his body. And the choice of a tattoo, particularly when you are people like Mike Tyson, LeBron James and others, you know, musicians, people in the in the public eye. These days, tattoos are often very, very much a part of that person's identity. They're not accidental. They're chosen by, you know, for whatever reasons, personal marketing, whatever. But they are meant to be part of that person's identity. So the person walks in the licensee and request the creation of a new work. The tattoo artist. Then second item creates the work and delivers it. In this case, the delivery is it's now on your skin. Maybe first we drew it up. Maybe first we did some mockups, but once it's on your skin, that is now the delivery of the work. That was requested. That's the second element. The third element is where all the legal arguments come in, and that is that the intent of the creator, the tattoo artist, was that the licensee, the person who gets the tattoo, has the right to distribute and display the work or copy the work to have the rights of a licensee. And that's where, you know, the question gets argued because do did the artist intend that you could do this in the world? That's the question. Well, what we what our research showed and what I think overwhelmingly the tattoo community and anybody who thinks logically about this recognizes is that, of course, the tattoo artist intends that the person who's now wearing the tattoo they created can go out in the world and be themselves, can show the tattoo if it's on somebody's face. That's really obvious. If it's on the arms of a player whose entire professional persona is often shown wearing shirts with no sleeves so you can see the arms. Of course, the tattoo artist intended that the recipient of the tattoo, the licensee, could go out in the world and distribute display the work because that's what they do when they are on TV or in movies, or simply in the public eye. And of course, this applies to somebody that's not famous. You know, if you have a tattoo and your friend takes a picture of you and it's intended, you want to post that on your Instagram, that's all intended. The artist recognized that you were going to go out on the world and put yourself on display, sort of the whole purpose of a tattoo. So in that sense, the court found in our case that there was an implied license granted by Victor Whitmill to Mike Tyson. Now, you think about we represented Victor Whitmill. Why would we have been arguing for the implied license in that case? Well, for us it was important because we needed to get to the next question whether there was an infringement. But in order to do that, we first had to address this argument that tattoos are not copyrightable. And this argument was all based on this enslavement or restriction that a copyright owner would be putting on every single human if tattoos were copyrightable and we said no, that issue was a non-issue. The implied license exists for every tattoo given by the tattoo artist to the person who can walk around in the world, it's an implied license to go be yourself. And if being yourself includes being famous, being yourself includes being photographed, appearing on TV, appearing in movies, having images, copies of you show up in magazines or every one of those is a copy. Then, of course, the implied license must exist, and if the implied license exists, then there is no problem recognizing the underlying copyright ability of the tattoo in the first place. That's how we use it. Court agreed. And the issue was established. In fact, in one of the the great moments in my litigation career, was hearing a federal judge come out and essentially deliver her opinion from the bench after three days of of hearing and said, you know, the defendants. She said that one of the first issues is, are tattoos copyrightable? And she said, of course, tattoos are copyrightable. Defendant's arguments are just silly. So that pretty much ended that issue. Defendant's arguments against the copyright ability of a tattoo were silly. That was Warner Brothers. So tattoos are copyrightable, but the implied license is there. Now, that brings us forward to the case. Just recently decided involving LeBron James again, certainly maybe even more famous in Mike Tyson and more ubiquitous these days. One of the most recognizable people on the planet, probably. And LeBron famously has a lot of tattoos. Well, as is become fairly well known in the last however many years the video games based on professional and now college sports, are huge, huge moneymakers. And so in an NBA video game produced by 2K Games and Take-Two Software, there is the LeBron James. You can you can choose LeBron James as one of the players on your team. Well in the way video games are these days. The the actual visual play is pretty remarkable. The characters are very lifelike. They certainly include the types of moves that they can make and unique aspects of their gameplay, but they also show the people and the players now control those rights. If they have the player's number, they may need the players association to be involved in it, the league has to license, the logos, but the players themselves control their right of publicity. Now, the right of publicity is something that's been around for a long, long time. But we know it and you all know it nowadays by its more common current name, name, image, likeness, NIL. Essentially the right to control the use of your identity, your image for commercial purposes, endorsement, etc. and so LeBron granted the rights to himself, which included a full depiction of himself, which meant those tattoos and the tattoo artist. I certainly, I would imagine, building on our case, filed a lawsuit against the video game manufacturers and software company, arguing that by putting those tattoos on the fictional cartoon video game version of LeBron James, that they made a copy of those tattoos and that was copyright infringement. And the case went to a jury. And the defendants argued a number of defenses. They argued very used. They argued de minimis. I mean, a number of other sort of copyright specific defenses to the claim, because there was no doubt that there was copying. There was no doubt that this was a copyrighted work. And the... remember that's been settled. And so and there was no doubt that they didn't have permission of the tattoo artist. Those are the three elements of copyright infringement, unless a defense applies. And they argued in this case that the defense was that they had received a license from LeBron James to use LeBron James likeness, name, image, identity in the character. And that was sufficient. Why? Because LeBron James had received an implied license from the tattoo artist in the first place. Back to the issue we had in our case. And so the case went to a jury. The jury had all these different ways to evaluate the case, and they were presented with a four page, jury instruction, form, which has all sorts of things that they could choose. But if they choose any one of the defendants defenses and find in favor of it, that ends the case because the defendant wins the very first item on the verdict form was, do you find that defendants have proved by a preponderance of the evidence, their implied license defense check one and yes, for defendants is checked. So the jury ended the case on this implied license. theory, just as we laid out before, when LeBron James went and got tattooed. And there's there's evidence in the case that this tattoo artist was particularly chosen. They knew what LeBron James. I mean, the whole point of this in part, frankly, sometimes is to make the tattoo artist famous in their own right as the guy who did LeBron James, that sort of thing. Back in our case, Victor Whitmill didn't want to be that guy and was bothered by the fact that he was dragged into it, but he still recognized that Mike Tyson had the right to go out in the world wherever he went. That was never an issue. It was only when the copy went on to somebody else. In this case, the copy never left. LeBron James. And that's the difference in the case. So the implied license, I think the jury decided correctly and in fact, and kind of fun over the weekend, I was contacted, by a reporter for law.com who, reached out to write an article about the LeBron James case and the implied license defense and found me because you can look me up and see that I was involved in back in the Whitmill case, so I had a chance to speak with them. got interviewed for the article. I expressed my opinion that I thought the jury got it correct and that that was the outcome. and that article is now available on Law.com. We'll put a link to it in the in the show notes. but it was the question and one of the things that he asked me was, do you think this is good or bad for tattoo artists? Because remember, that was our perspective. We were on the, on the, on the side of the tattoo artist. And, you know, my answer was, well, I don't think it's necessarily good or bad per se. It just is. I don't think anybody who's actually thinking about this from the point of view of the tattoo artist or anybody in that community, can honestly argue that they don't have the intent that every single recipient of one of their tattoos gets to go out in the world and be themselves, and that the tattoos become part of their identity. It literally is the point. And so particularly when you put it on famous people who you know are going to be displayed, you actually want to be the tattoo artist whose interesting, cool work is seen everywhere. So anybody they would try to argue that that implied license doesn't exist, I don't think is being is actually being very serious about it. Now, this artist sort of feels like, well, yeah, but LeBron being LeBron on TV is one thing. But the moment you make a copy and you put it on a cartoon character, that should be different. I should get paid for that. I should have some rights to that. And here's where I think that, you know, the fact that they made a character of LeBron, a video game character, LeBron, it's not actually the image of LeBron. Back to our case in The Hangover when Mike Tyson appears in The Hangover movies, it's Mike Tyson, no question. He is just himself. He has his own face, and his face includes the tattoo here. Yeah. You know, and remember we made the argument that it was copying it off of Mike Tyson's face on to Ed Helms face. That created the infringement. Well, they make the argument in this case that the, tattoo, by being copied on to the video game character was like our tattoo in Hangover Part two. I disagree because I think that the reality is the ability, if you're famous enough, that someone's going to make a video game character in, you are going to appear in that video game as yourself, then that's just an extension of a photograph of you, a painting of you, any other depiction of you, your identity, and in that sense, the license, the implied license has to include the ability to be yourself in the world and grant people the right to depict you. And that's what happened here. So I don't think that this is a ruling that is bad for tattoo artist. But I did say in the article, and I think this is something that you've heard me say many times, if you want an outcome that is different than what copyright law will do automatically, you've got to get that outcome in writing. So conceivably in the future, I could see, LeBron James or someone like that going into a tattoo artist, maybe a high profile one where they're mutually want to be working together. And the idea is I'm going to end up in this video game somewhere. They could certainly have written the agreement between the two of them that recognizes the implied license in all these things. But if the tattoo is reproduced on some other version, and that some other version makes money, that goes to LeBron, that may be some portion of that could be a royalty that would flow through the tattoo artist. They could have written that down. In other words, they could have drafted a license to supersede the implied license, and they could have put limitations on the scope or economic terms for certain types of uses. That's always available. Now, maybe LeBron James says no when he walks into a different tattoo artist. I don't know, but that's the way that this could have been solved for the tattoo artist. But I do think that the tattoo, copyright ability question is settled. And frankly, I think now the implied license should be settled law and people can sort of order their behavior going forward based on that outcome. So tattoos copyrightable implied license. Absolutely. If you get a tattoo, go out in the world and get your picture taken and get famous enough to be in a video game, good for you. If you're a tattoo artist and you think that might be happening, consider a written agreement beforehand just in that little micro space that hey, if you go out and make a gazillion dollars, by a copy of the tattoo, maybe I get a few pennies. Chances are people will sign that for you because they're not trying to screw you. But the point is, you don't get to go up and argue, all of that's infringement, and I get all of those profits, which was the argument they were trying to make in this case. I think that's why it failed. So good result, good job court. Good job jury, good job lawyers. And hope you enjoy that video game. So that's it for today. Find us and follow us wherever you get your audio podcasts. Here at The Screen Lawyer Podcast, we drop new episodes every other Wednesday. If you're following us on YouTube and you like these videos, hit that like and subscribe button. So you get all of our content and you can always find us at TheSceenLawyer.com. Take care.