Tag Archive for Constitutional rights

Costumes, Characters and Copyright: a Cosplayer’s Guide to Recent Cases

June 16, 2017 articles Comments Off on Costumes, Characters and Copyright: a Cosplayer’s Guide to Recent Cases

Introduction

No more eloquent a description of a fan costumer, or cosplayers as they are known, exists than in the amicus curiae brief filed by the International Costumer’s Guild in the recent U.S. Supreme Court case Star Athletica, LLC v. Varsity Brands, Inc.[1], where the costume creators were described as a “community of celebrants of culture”.[2]

Indeed, the Star Athletica case has been highly anticipated by cosplayers and fan filmmakers who want to know the creative lengths to which they may go to express their affiliation with and love of popular culture icons, historical figures and fantasy characters as part of this costuming aspect of modern fandom[3], without infringing another’s copyright. They truly consider costuming as an art form.

Several key copyright cases have been decided in the past few years which give some guidance to these creators, culminating in the United State Supreme Court weighing in on the question this year in Star Athletica. The case between two cheerleading uniform companies[4] was recognized by cosplayers as having the potential to lock them out of being able to lovingly create or re-create the costumes and uniforms that show their affiliation and association with an interest group, fictional or real. And although clothing has always been categorized as a “useful item” under the copyright law, and thus ineligible for protection, the copyrightability of decorations on, or making up parts of clothing, has not been definitively decided.

Uniform case decided “by the book”

When deciding a case based on a federal law, the court always looks to the language of the statute for its interpretation. Justice Thomas, the author of the majority opinion in Star Athletica LLC v. Varsity Brands, Inc.[5], did that very thing and reiterated the main requirement of copyrightability – it must be an original work of authorship fixed in any tangible medium of expression”[6] and a “pictorial, graphic or sculptural work”[7]. Justice Ginsburg did point out in her concurrence that the Supreme Court has recognized that copyright requires an admittedly “very low level of creativity in a work, (where) even a slight amount will suffice.”[8] However, Justice Breyer in his dissent stated that he did not agree that the designs Varsity Brands, Inc. submitted to the copyright office are eligible for copyright protection, since they cannot be perceived as a two or three dimensional works of art separate from the useful article.[9]

 

 

The claim to copyrightability of the simple geometric designs arranged on Varsity Brand’s cheerleading uniforms was pointedly not decided by the Court, and both the majority and Justice Ginsburg said they expressed no opinion on whether the surface designs on the uniforms at issue are eligible for copyright protection.[10] Although Varsity Brands, Inc. holds over 200 copyright registrations for the two dimensional designs depicted on their uniforms and other garments, they filed pictures of the designs as they appear on the uniforms. This raised the question of whether they had a copyright in the designs themselves, or just in the pictorial work of the uniforms with the designs.  Looking at the submissions by Varsity Brands, the claimed designs are little more than edging along the lines of the uniform shape; Justice Breyer in his dissent said “considered on their own, the simple stripes and are plainly unoriginal”[11] and cannot be copyrighted.

Courts around the country have formulated tests to determine the separability of copyrightable features incorporated into a useful article, and the Supreme Court was asked to settle the “widespread disagreement” over the matter. The Supreme Court’s opinion did not take into account some of the arguments put forth by the parties who submitted amicus curiae briefs, such as the non-mechanical functions of certain uniform designs that serve to identify the wearer with an interest group or association. I believe their interests and those of other costume makers and cosplay enthusiasts were served by the court deciding that the cut, shape and dimensions of articles of clothing were still not eligible for copyright.

The court ultimately held that:

“a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”[12]

Imaginative removal of the design

Justice Thomas gave several examples of the test for whether a design feature of a useful article, in this case a cheerleader uniform, can be considered a “pictorial, graphic or sculptural work only if, and only to the extent that, such design incorporated pictorial, graphic or sculptural features that can be identified separately from, and can exist independently from, the utilitarian aspects of the article” under the statute.[13] He used a decorated guitar to illustrate how the design, “etched or painted on the surface of a guitar could be imaginatively removed from the guitar’ surface and placed on an album cover, (and) it would still resemble the shape of a guitar, but the image on the cover does not “replicate” the guitar as a useful article.”[14]

In deciding that the lines, chevrons and color blocks claimed as a copyrightable design on the cheerleader uniforms could be removed from the uniform and placed on a painter’s canvas or other medium and would qualify as a pictorial, graphic or sculptural work on its own, the opinion does not decide whether these “standard uniform elements”[15] which are “plainly unoriginal”[16] would withstand a challenge of their copyrightability. However, the Court did emphasize that even if Varsity Brands Inc. were able to establish “a valid copyright in the surface decorations at issue here, (they) have no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut and dimensions to the ones on which the decorations in this case appear. They may prohibit only the reproduction of the surface designs in any tangible medium of expression – a uniform or otherwise.”[17] This leaves intact the near-century old principle that fashion designs are not copyrightable, except for designs that can be separately imagined apart from the garment. The same principle strengthens the case for cosplayers who replicate the uniforms or clothing of fictional or historical persons, as they are free to make a costume which copies the cut, shape, and dimensions of the original garment, but may not reproduce any separable designs or decorative element that would be eligible for copyright protection on its own.

Free speech implications

For the purposes of Cosplayers and other makers of homemade costumes and uniforms which identify them with teams, groups, associations, or causes, this special clothing allows their self-expression and even self-actualization through apparel they created.[18] In fact, costume-making implicates First Amendment associational and free speech individual rights guaranteeing “the freedom to engage in association for the advancement of beliefs and ideas.” Clothing allows individuals to engage in speech and associative activities, and the Supreme Court has also recognized that “the citizenry at large has a ‘liberty’ interest … in matters of personal appearance.”[19] Although the Court did not take up the constitutional implications in this case, the issue may well come up in future cases.

TV and movie characters and copyright

Once costume makers get their creations past the separablity issue, the next hurdle is considerably more difficult, especially for fans of famous popular culture icons. This is due to the line of recent cases making clear that characters in comic books, television shows[20], and motion pictures[21] may be entitled to copyright protection. However, the character must be “especially distinctive and contain some unique elements of expression”[22] and it cannot be a stock character, nor be a character “lightly sketched” and lacking description.[23]

The 9th Circuit Court in California, which hears the majority of these kinds of cases as they are in the heart of Hollywood and moviemaking, have developed a three-part test for determining whether a character in a comic book, television program, or motion picture is entitled to copyright protection: First, the character must generally have “physical as well as conceptual qualities.” Second, the character must be “sufficiently delineated” to be recognizable as the same character whenever it appears. Considering the character as it has appeared in different productions, it must display consistent, identifiable character traits and attributes, although the character need not have a consistent appearance. Third, the character must be “especially distinctive” and “contain some unique elements of expression.”[24]

The Batmobile is a copyrightable character

The DC Comics v. Towle case involved a custom car maker’s building and selling of two replica automobiles, one of the Batmobile from the 1966 Batman television series, and one replicating the Batmobile in the 1989 film BATMAN.[25] The 9th Circuit was called upon to decide whether the Batmobile was distinctive enough to be a copyrightable character, such that Towle’s automobiles infringed upon CD Comics’ rights under copyright law. Towle used the name “Batmobile” in his advertising and domain name for his business, which targeted avid Batman collectors who paid upwards of $90,000 for each replica automobile. He admitted that he intentionally copied the design of the Batmobile in the 1966 television series and the 1989 movie, although he was not licensed or authorized to reproduce, make or sell any products bearing the trademark or copyright of DC Comics. His defense was built around his alleged belief that the Batmobile was not a copyrightable character and therefore he did not infringe DC’s rights by building his replica cars.

DC had retained its merchandising rights to all DC characters in the comic book Batman, including “any other character or thing included in the Property … or under a name which incorporates any phrase, clause or expression used in DC’s comic strips or comic magazines….”[26] in its licenses to both the television series and the motion pictures. Even though there were several sublicenses involved with both the TV series and the movie, those licensees did not have the right to reproduce or sell any products based on characters from the original Batman comic books. The licenses’ language indicates that DC considered the characters and “things” in the Batman comics to be distinctive enough that merchandising and products were anticipated based on them.

The court used its three part test as set out above, and held that the Batmobile originally depicted in the 1940s comic books and later on television and in movies, kept its distinctiveness as a character no matter whether it was in the two dimensional format of a comic book, TV show or motion pictures, or in three dimensional form such as an actual car. Although the Batmobile depicted in the 1966 TV series starring Adam West[27] did not copy exactly the version of the car depicted in the comic books, it maintained “… a bat-like appearance and was equipped with state-of-the-art weaponry and technology.”[28] Likewise, the Batmobile in the 1989 BATMAN movie was not an exact replica of either the comic book or the television Batmobile, but still featured futuristic crime-fighting technology, as is part of the distinctiveness of the Batmobile character. Thus, all the various Batmobiles were “sufficiently delineated” wherever they appeared. They were “… known by one consistent name that identifies it as Batman’s personal vehicle,” and, although some of its physical traits have changed over time, several have remained consistent, including its “high-tech gadgets and weaponry,” “bat-like motifs,” and its jet black color. Additionally, the district court found that the Batmobile is always “depicted as being swift, cunning, strong and elusive,” and is even portrayed as a “superhero” and “Batman’s sidekick, if not an extension of Batman’s own persona.”[29] The court applying these tests determined that the Batmobile displays “consistent, identifiable character traits and attributes,” and “contains unique elements of expression” along with a “unique and highly recognizable name” The 9th Circuit Court of Appeals therefore found that the Batmobile was not a stock character and was eligible for copyright protection. In its conclusion, the Court could not resist a Batman quote: “As Batman so sagely told Robin, “In our well-ordered society, protection of private property is essential.” Batman: The Penguin Goes Straight, (Greenway Productions television broadcast March 23, 1966).”[30] DC Comics was the owner of the Batmobile character, and Towle had infringed it with his unauthorized reproductions.

The Cosplayer’s dilemma

Cosplayer value exactness in portraying their favorite TV or movie characters, and have expressed their affiliation and love for them in very creative and even ingenious ways. Some have even developed custom fabric treating processes to replicate metal, and have actually “invented real technologies based on fictional concepts, such as a working Captain America electromagnetic shield and a functioning Star Trek phaser.[31] This kind of creativity and problem-solving advances the very purpose of the copyright law and its constitutional foundation, “(t)o promote the Progress of Science and useful Arts.[32]” Some cosplayers engage in period costuming and attend various renaissance fairs and major conventions, constructing elaborate costumes, accessories and props based on their research of the historical period. The most popular type of costuming is comic book-based costuming, which has spurred the wildly popular ComicCon and other major conventions across the country that thousands of fans enjoy.

With a fully fleshed out, distinctive and recognizable character which is eligible for copyright protection, the cosplayer wanting to reproduce his or her favorite character must do it for love and not money. It is widely known that many of these conventions offer cash prizes that are not insignificant for the best and most accurately created costumes. The worry of cosplayers is that prizewinning may be seen as a commercial activity using the copyrighted works of another, and be seen as infringement. Because of the underlying earnestness of fan costume makers who make only one costume for themselves, do not offer reproductions of the costume for sale, and do not directly make money from them through licensing or otherwise, the holders of the right to the characters have so far been gracious in allowing this kind of costuming. Fans who have tried to make replica costumes for other purposes such as fan films have another hurdle to get over, the written or unwritten rule that fan film can’t be commercial.[33]

Enter and Exit Axanar

The concept of “fleshing out” a character so that it is distinctive enough to merit copyright protection was again revisited in Paramount Pictures Corp. and CBS Studios Inc. v. Axanar Productions, Inc.[34] Alec Peters, the president of Axanar Productions, raised over a million dollars on two different crowdsourcing sites to finance a prequel to the Star Trek series. He used material from the original television series, the movie, and even from a novel and game legitimately licensed by individuals from Paramount. Peters offered his 20 minute short film “Prelude to Axanar” to donors, as well as merchandise bearing the trademarks of Star Trek. He released “Prelude” on YouTube to promote and raise funds for a full length movie. He used a professional crew, planned to build a sound stage for this and other movie, and did everything to try to stretch the line between fan films and commercial films. The owners of the Star Trek copyright and trademarks saw all this as clear infringement, and sued Peters and his company.

Citing DC Comics v. Towle, the District Court in the Axanar case applied the 9th Circuit’s three part test for a copyrightable character: it must have physical as well as conceptual qualities and must be sufficiently delineated to be recognizable as the same character wherever it appears. It must be especially distinctive and contain some unique elements of expression. In its discussion of the uniforms of the Klingon and Vulcan officers in Star Trek, the court used the standard set out several months later by the US Supreme Court in Star Athletica, that “[t]he artistic aspects of these costumes that can be identified separately from, and are capable of existing independently of, the utilitarian purpose of the costume” are copyrightable[35]. Without separately identifiable artistic aspects, the uniforms are “a grey tunic with shoulder covers and a red neckpiece” and “an Asian style long robe and a drape decorated with Vulcan writing.”[36] Although the Axanar court did state that “The combination of artistic visual elements of these uniforms likely contain original expressions protectable under the Copyright Act.”[37] Under the new Supreme Court rule, presumably only the “Vulcan writing” would be a copyrightable artistic element separate from the uniform design itself.

The U.S. District Court brushed aside Axanar Productions’ argument that the two fictional species in Star Trek, Klingons and Vulcans, were not copyrightable characters, finding them especially distinctive and recognizable, with unique element of expression. The Court found the same with the Garth of Izard character, as Garth was a featured character in one television episode, the title character of one novel, and appeared in the Four Years War game – it was not “obscure or lightly sketched.”[38] The Court even give an example of what is meant by “lightly sketched” characters in copyright law, citing Olson v. Nat’l. Broad. Co.: “The … characters are depicted only by three- or four-line summaries in the … treatment and screenplay, plus whatever insight into their characters may be derived from their dialogue and action.”[39]

The Court also held that the “defendants intentionally used elements from the Star Trek Copyrighted Works to create works that stay true to the Star Trek canon down to excruciating details”[40] so there was no transformative use, nor was Prelude to Axanar a parody, shooting down the defendant’s fair use defense. The commerciality of the project was established by the nonmonetary benefits hoped to be obtained by Alec Peters such as other job opportunities, and the fact that it was distributed free did not persuade the court that the defendants did not derive indirect commercial benefits, including the successful fundraising campaign, from Star Trek’s popularity. In addition, the fourth element of fair use analysis, market impact, was found by the court to be significant, since the fact that Prelude was distributed ”free” online may likely increase the risk of market substitution as fans choose free content over paid features.[41] The parties settled soon after this opinion was issued, and Alec Peters was ultimately unsuccessful in attempting to again crowdfund his movie studio project. His campaign failed as he did not reach his $60,000 goal, raising only $22,000. One commentator opined that “the 15,000 previous Axanar donors stayed away.”

Fallout for fan films

In the middle of the litigation over Prelude to Axanar, the owners of the Copyrighted Star Trek Works came out with strict new rules for making Star Trek fan films in June of 2016.[42] No longer would fans be guided by somewhat flexible “unwritten rules” in their homages to their favorite fictional world – Alec Peters and Axanar Productions went too far and ruined any possibility of wide open productions for future Trek fan film makers.

The new rules for Star Trek fan films limit any production to 15 minute segments for an entire original story, with no more than two episodes for a total of 30 minutes, with no additional episodes,  parts, sequels, seasons or remakes. The rules also prohibit fans from making their own props, uniforms and other costumes, stating that “if commercially available”, filmmakers must use “official merchandise.” The title cannot include the name “Star Trek”, and the filmmaker can’t use the term “official” in any of its marketing, promotions or social media for the fan production.  In addition, the filmmakers must be amateurs, they cannot be paid, and can’t be employed on any Star Trek or CBS/Paramount licensees’ productions. Fundraising is to be limited to $50,000, the film cannot be distributed in physical form such as DVD or Blu-ray; no merchandise can be sold or given away, and there can be no licensing of fan-created production sets, props, or costumes.

It is likely that other owners of copyrights to popular movies, television shows and other works will follow suit and develop rule for fan made productions as CBS/Paramount did. Lucasfilms, owner of the Star War films franchise, set out rules for Star Wars fan productions several years ago, couching the rule in a “contest” format and limiting any Star Wars fan film to only five minutes in length, with restrictions similar to the Star Trek rules.

Cosplayers’ guidelines from the Supreme Court

Despite the tightening up of fan film rules by the Star Wars and Star Trek owners, the United States Supreme Court in the Star Athletica case has left open a way for cosplayers to create celebratory replica and tribute costumes based on their favorite characters. As stated in the case, the shape, cut and dimensions of uniforms and by extension, costumes, like all fashion designs, are not copyrightable. Only the surface designs that are separable from the garment and would be copyrightable in themselves as artistic works are eligible for copyright protection.

Cosplayers pride themselves in making their costumes fully authentic and identical to the originals, and value that exactness in contests and competitions. However, it may be that more creativity on their part is necessary to get over the hurdles of the “especially distinctive” character and copyrightable decorations on costumes. After all, the fan created costume or fan film “does not seek to be the original work, but rather to embody it and show appreciation by a fan of the work who wishes to replicate the aesthetics to express their love for it.”[43] These “acts of association through apparel” are free to continue with the blessing of the Supreme Court for cosplayers who add that little extra spark of originality to their creations.

 

©2017 Mary Ellen Tomazic

 

 

[1] Star Athletica LLC v. Varsity Brands, Inc., 580 U.S.__, No.15-866 (March 22, 2017.)

[2] Amicus Curiae brief of Public Knowledge, International Costumers Union, and the Manticoran Navy at p. 15,  Star Athletica LLC v. Varsity Brands, Inc., 580 U.S.__,  No.15-866 (March 22, 2017.)

[3] Amicus Curiae brief for the Royal Manticoran Navy: The Official Honor Harrington Fan Association, Inc. at p.1, Star Athletica LLC v. Varsity Brands, Inc., 580 U.S.__,  No.15-866 (March 22, 2017.)

[4] Star Athletica LLC v. Varsity Brands, Inc., _580 U.S.__, No.15-866 (March 22, 2017.)

[5] Id.

[6] 17 U.S.C. § 102 (a).

[7] Id. at (a) (5).

[8] Star Athletica LLC v. Varsity Brands, Inc., 580 U.S.__, No.15-866 (March 22, 2017) (Ginsburg, J. concurring, p. 18, n 2.)

[9] Id., Breyer, J. dissenting, p.21.

[10] Star Athletica LLC v. Varsity Brands, Inc., 580 U.S.__, No.15-866 (March 22, 2017), p.10 n 1.

[11] Id., Breyer, J. dissenting, p.30.

[12] Star Athletica LLC v. Varsity Brands, Inc., 580 U.S.__, No.15-866 (March 22, 2017), p. 21.

[13] 17 U.S.C. § 101 (a).

[14] Star Athletica, 580 U.S. __, No.15-866, at 11.

[15] Amicus Curiae brief of Public Knowledge, International Costumers Union, and the Manticoran Navy,  Star Athletica LLC v. Varsity Brands, Inc., 580 U.S.__,  No.15-866 (March 22, 2017) at 17.

[16] Id., Dissenting opinion of J. Breyer, p. 46.

[17] Id., p. 12

[18] Amicus Curiae brief of Public Knowledge, International Costumers Union, and the Manticoran Navy,  Star Athletica LLC v. Varsity Brands, Inc., 580 U.S.__,  No.15-866 (March 22, 2017) at 15.

[19] Id. at 19.

[20] D.C. Comics v. Towle, 802 F. 3d. 1012 (9th Cir. 2015), cert denied 136 S.Ct. 139 (2016) (Batmobile.)

[21] Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., 900 F. Supp. 1287 C.D. Cal. 1995) (James Bond.)

[22] D.C. Comics v. Towle, 802 F. 3d. 1012, 1019 (9th Cir. 2015), cert denied 136 S.Ct. 139 (2016.)

[23] Id.

[24] D.C. Comics v. Towle, 802 F. 3d. 1012 (9th Cir. 2015), cert denied 136 S.Ct. 139 (2016).

[25] Id., p. 1. Mark Towle does business under the name “Garage Gotham”, where he manufactures and sells replicas of automobiles featured in motion pictures or television programs.

[26]D.C. Comics v. Towle, 802 F. 3d. 1012, 1017 (9th Cir. 2015), cert denied 136 S.Ct. 139 (2016).

[27] The Court seems to wax nostalgic about the Batman television series, describing the “visual onomatopoeia that flashed on screen during fight scenes—Pow! Boff! Thwack!” and other remembrances. Unfortunately during the writing of this article, Adam West passed away at the age of 88 on June 10, 2017.

[28] D.C. Comics v. Towle, 802 F. 3d. 1012, 1012 (9th Cir. 2015), cert denied 136 S.Ct. 139 (2016).

[29] Id., at 1018.

[30] Id., at 1027.

[31] Amicus Curiae brief of Public Knowledge, International Costumers Union, Star Athletica LLC v. Varsity Brands, Inc., 580 U.S.__, No.15-866 (March 22, 2017) at 13.

[32] U.S.C.A. Const. Art. I § 8, cl. 8.

[33] See Paramount Pictures Corp. & CBS Studios, Inc. v. Axanar Productions, Inc., 2017 WL 83506 (U.S. Dist. Ct., Central Dist. of Cal., Jan. 3, 2017). See also Mary Ellen Tomazic, Fan Films – Breaking the Unwritten Rules and Defining Profit (2016), http://met-iplaw.com/met-iplaw2012/?p=185.

[34] 2017 WL 83506 (U.S. Dist. Ct. C.D. Cal. Jan. 3, 2017).

[35] The Court cited its own twenty year old case, Entertainment Research Group, Inc. v. Genesis Creative Group, Inc., 122 F. 3d1211 (9th Cir 1997) for the separability test later used by the Supreme Court in Star Athletic, LLC v. Varsity Brands, Inc., 580 U.S.__, No.15-866 (March 22, 2017)

[36] Paramount Pictures Corp. & CBS Studios, Inc. v. Axanar Productions, Inc., 2017 WL 83506 (U.S. Dist. Ct., Central Dist. of Cal., Jan. 3, 2017).

[37] Id. At 5.

[38] Id. at 6.

[39] 855 F. 2d 1446, 1452-53 (9th Cir. 1988). This case involved a copyright infringement case against the makers of the “A-Team” television series.

[40] Paramount Pictures Corp. & CBS Studios, Inc. v. Axanar Productions, Inc., 2017 WL 83506 (U.S. Dist. Ct., Central Dist. of Cal., Jan. 3, 2017).

[41] Id.

[42] Star Trek Fan Film Guidelines, http://www.startrek.com/fan-films#sthash.BczIAct6.dpuf

[43] Amicus Curiae brief for the Royal Manticoran Navy: The Official Honor Harrington Fan Association, Inc. at p.1, Star Athletica LLC v. Varsity Brands, Inc., 580 U.S.__,  No.15-866 (March 22, 2017.)

NBA2K16 should pay for the “Extra Value” Added to the Games by Players’ Tattoos

April 15, 2016 articles Comments Off on NBA2K16 should pay for the “Extra Value” Added to the Games by Players’ Tattoos

A tattoo is undoubtedly a work of art, and once inked onto a person’s skin, that art is permanently “fixed” as a part of that person. But is it “fixed in a medium” as required for protection under the Copyright Act?

That is the question posed by the makers of the wildly popular basketball video game series, NBA2K, in answering a lawsuit brought by the owners of the copyrights to the tattoo designs featured on some NBA players in this and prior years’ games. After making a deal with the tattoo artists to exploit their designs in return for a royalty, Solid Oak Sketches, LLC offered 2K Games, the makers of the NBA2K series, a license for the tattoo designs, but they declined. Ultimately Solid Oak filed suit for copyright infringement against the video game makers and developers, Visual Concepts LLC, 2K Games Inc., and Take-Two Interactive Software, Inc. on February 1, 2016 after this year’s video game, NBA2K16, was released.[1]

Tattoos meet copyright standards

The Copyright Act has two requirements for copyrightability: the work must be an original work of authorship,[2] and it must be “fixed in a tangible medium of expression.”[3] The “fixation” requirement is not limited, but may be “any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”[4]  The definition section bolsters this wide view of the requirement: “A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” (Emphasis supplied.)[5] No one would argue that an individual’s body is not permanent or stable enough to be a medium of expression.

The issue of the copyrightability of tattoo designs is well settled, as they are original works of authorship registrable in the Copyright Office just like any other art.[6]  The copyrightability of a tattoo design on a person’s skin, which is only one “copy”, has been questioned by legal scholars and the defendants in this case. However, a tattoo on a person can be copied, reproduced, and communicated, just like other works, through copies of the tattoo on a person’s skin reproduced in other media. In the case of the tattoos on NBA players in the NBA2K games, the works are copied and reproduced not only hundreds, but MILLIONS of times in the games.

Owners have exclusive rights

Under the Copyright Act, the owner of the copyright, whether the original artist or his or her assignee, has the exclusive right to exploit the work. This includes the right to copy and reproduce the work, to publicly perform or display the work, and to prepare derivative works.[7] The very fact that 2K Games reproduced the tattoos on NBA players’ bodies for its games, and also reproduced them on their product packaging and in their advertising materials, shows that the tattoos on a body are capable of being reproduced in other media. Making these copies and exploiting them commercially is the sole right of the copyright owner. Even LeBron James could not make copies or license others to make copies of his own tattoos in this case, since without a waiver, it is assumed that tattoo designs are owned by their creator, not the person who pays to have that design inked on their skin. This was illustrated in the lawsuit filed by the tattoo artist who created Mike Tyson’s tribal face tattoo against Warner Brothers for reproducing the tattoo on a cast member of the movie “The Hangover 2” and using it prominently in its advertising. Tyson had signed an agreement that the tattoo design was solely owned by the tattoo artist, so he alone had the right to reproduce the design. Warner Brothers settled the case with the artist shortly after the movie was released.[8] There have been several other cases in which tattoo artists have sued to stop the reproduction of their tattoo art in other media for profit. Tattooist Matthew Reed sued NBA star Rasheed Wallace and Nike to stop the use of the tattoo in a sneaker ad which actually featured a simulation of the tattoo’s creation. Soccer icon David Beckham’s tattooist sued him over a proposed advertising campaign which revolved around a tattoo created for him. Both athletes and Nike settled out of court with the artists.

NBA2K series is a multimillion seller

According to sales figures, NBA2K16 shipped an impressive and record breaking $4 million copies the first week of its release.[9] Revenue for Take-Two rose substantially in the second quarter of 2015, when NBA2K was released, to $364.9 million, a 169% increase from the previous year. Also digital downloads of the game doubled from the prior year.[10]  Take-Two’s 2K Sports game developers have been called “The kings of customization”, and are described by reviewers as having “upgraded their tattoo game” by allowing gamers to choose from 1500 tattoo designs that can be used to create “almost and endless array of virtual body art.”[11] So 2KSports can offer 1500 tattoo designs to customize their new game, but they do not want to pay for those designs that help them make their millions.

License offer rejected

Solid Oak Sketches, through their attorneys, attempted to negotiate a license for future uses of their copyrighted tattoo designs in early summer 2015, before the latest version of the game was released. The attorneys for Solid Oak offered a confidential settlement in compensation for 2K’s “ongoing acts of copyright infringement” in their unlicensed use of the tattoo designs in earlier years’ versions of the game. The letter pointed out that several of their clients’ copyrighted tattoo designs, namely those on LeBron James and Kobe Bryant, were featured prominently not only in the games, but also on the cover photos and advertising for those games. LeBron James was pictured on the cover of NBA2K14, with the disputed tattoos visible; that version sold over 7 million units. Those tattoos on LBJ were said to be “the face” of the 2014 game, making the tattoos’ marketing and promotional value several times higher than the other tattoos. After several correspondences between the Solid Oak attorney and the principals of 2K Sports, the game company terminated the negotiations and continued with the production and release of NBA2K16.[12]

Damages for Copyright infringement

Under the Copyright Act, damages for infringement can be calculated from the copyright owner’s actual damages suffered as the result of the infringement, or the owner can elect at any time before judgment to recover an award of statutory damages, which can range from $750 to $150,000 per infringement, depending on the willfulness of the infringement.[13] In addition, the court has the discretion under the law to allow recovery of full costs by or against a party, including reasonable attorney’s fees to the prevailing party.[14]

In their attempt to negotiate a settlement and license for future use of its tattoo designs with the heads of 2K Sports and the other defendants, Solid Oak attorneys set out what they considered a reasonable license fee. Since the courts have not decided the issue of damages for tattoo design infringement due to out of court settlements in several recent cases, and Solid Oak did not have access to 2K’s sales and revenue numbers for sales of the infringing games, the attorneys calculated the potential damages according to the only public damage award known for tattoo infringement. That award of $22,500 by a bankruptcy court to the tattoo artist Christopher Escobedo, who created a tattoo visible on an athlete in the video game “UFC Undisputed” which sold 4.1 million copies, was appealed as inadequate, and the artist settled for an undisclosed amount. Although the attorneys for Solid Oak allowed that the ultimate payout probably exceeded the $22,500 amount, they used that amount along with the publicly available sales figures for the 2K game and came up with $819,500 as compensation for prior infringements, and offered a perpetual license for all future uses of the specified tattoos of $1,144,000. They noted that most of the athlete’s careers will surpass four additional years as represented by the license fee.[15]

Alternative theories and trademark defenses

Some writers have posed different solutions to the tattoo licensing situation, including defending on the fair use theory that some of the tattoos in the games are not always visible, or are a very small or “de minimis” part of the games. That of course does not hold water with some of the tattoos on the NBA players in the games which are not only prominently featured in the game but are used in its cover art and advertising.[16] This defense ties in with another which assumes an implied license from the artist to the bearer of the tattoo, which would allow a sublicense to third parties to show the players’ tattoos in any commercial depictions of him or her. However, under copyright law implied licenses are disfavored; the burden of proof is on the defendant to prove the existence of a license by a preponderance of the evidence.[17]

Others have seen the issue as one of personal freedom, with the person bearing the tattoo having the right to publicly display the tattoo, even in commercial settings for athletes and celebrities. This argument is similar to the “nominative use” defense in trademark law, which allows the natural portrayal of trademarks and logos seen and referred to in real life situations.[18] For example, under the nominative use theory, Lebron James can appear in a film as himself with his real tattoos visible, since they are part of the “landscape” of him and of the movie. However, it would not be nominative use if Lebron James’ tattoos were focused on in the film and prominently displayed in the trailer and advertising for the movie. That would imply an association with the tattoo artist as having a connection with the film, which would help market and advertise the film, even though the artist is not connected to the movie and may not want his or her designs used in that movie. However it is clear the defense does not quite fit here, as usually it is a prominent company’s logo which has been wrongfully co-opted by the moviemakers to bolster sales of the film by association with that company. Unless a tattoo artist is famous worldwide and his or her designs well known, there is little value (or harm) in associating a movie (or game) with that artist. On the other hand, the association with the game implies that the tattoo artists or their representatives have agreed to their tattoo designs being in the game, and are being paid for them, which they are not.

Public policy argument

Other writers want to amend the Copyright Act to deny tattoo artists copyright protection for their designs by changing the definition of “copies” to exclude the human body. They argue there is a “public policy” that would prevent the potential for intrusion on the human rights of the tattoo artist’s clients by giving the artist some control over what is done with the tattoo once it is on the client’s body. The vague notion that tattoos are becoming so ubiquitous in today’s society that it would be difficult to control the use of them, and therefore the artist creating them should not be paid for reproductions of that art (while on a body) in some other medium is weak at best. Singling out this type of art may violate the tattoo artists’ constitutional right to obtain copyright protection for their creations which are legitimately protectable.

Athlete unions involved

The NFL Players Association is the only athlete union so far to address this tattoo situation by encouraging players to get an assignment, release or waiver from the tattoo artist agreeing to indemnify the game maker against third party claims before they would be allowed to have their tattoos depicted on merchandise. Several NFL players have done just that and relieved the makers of games they are depicted in from paying for the use of their tattoos. Colin Kaepernick got permission from the two artists who inked his tattoos to use them in the video game “Madden 15” released by Electronic Arts.[19] The combination of the popularity of video games featuring professional athletes as they appear in actual games and the number of athletes with tattoos makes the issue of releases and waivers a real concern for both athletes and game makers.

Enhancement of the games

As mentioned before, the reason athletes’ tattoos are so valuable to video game developers is that they make the games as realistic as possible. They are seen as an important feature of the games, partially responsible for the increase in the games’ popularity and sales.[20] The artwork provided by the tattooists is obviously a subject of negotiation for the game makers, as they make more money from the realistically enhanced depictions of the players. It is not an acceptable excuse that it would be too difficult for these game developers to get waivers from all athletes involved or a license from all the tattoo artists. You have to spend money to make money, as all filmmakers who have to pay for the music and artworks depicted in their movies know. Similarly, as the game makers’ revenue is enhanced by realistic depictions of tattoo art, the copyright owner artists responsible for their increased revenue should also share in the wealth.

 

©2016 Mary Ellen Tomazic

 

[1] Complaint for Copyright Infringement, Solid Oak Sketches, LLC v. Visual Concepts LLC, 2K Games Inc., Take Two Interactive Software, United States District Court, Southern District of New York, No. 16-00724.

[2] Id., § 102(a) (5). “… the requisite level of creativity is extremely low; even a slight amount will suffice.”  Feist Publications, Inc. v. Rural Telephone Service Co., Inc., U.S.Kan.1991, 111 S.Ct. 1282, 499 U.S. 340, 113 L.Ed.2d 358, 18 U.S.P.Q.2d 1275.

[3] Id.

[4] Id.

[5] Id., § 101.

[6] Tattoo Art v. TAT International LLC, 498 Fed.Appx. 341 (C.A. Va., 2012).

[7] 17 U.S.C. § 106(5).

[8] “Who Owns Your Tattoo? By Marisa Kakoulas, Inked Magazine, March 9, 2012, available at http://www.inkedmag.com/articles/who-owns-your-tattoo/.

[9] “NBA 2K16 Breaks Records With 4 Million Copies Shipped in Under One Week,” GameSpot.com, Oct. 2, 2015,

available at http://www.gamespot.com/articles/nba-2k16-breaks-records-with-4-million-copies-ship/1100-6431093/.

[10] Id.

[11] “NBA 2K16: Breaking Down Best New Features for This Year’s Game,” BleacherReport.com, Aug. 31, 2015,

available at http://bleacherreport.com/articles/2558410-nba-2k16-breaking-down-best-new-features-for-this-yearsgame.

[12] Id., fn. 1

[13] 17 U.S.C. § 501. § 504.

[14] Id. at § 505.

[15] Complaint for Copyright Infringement, Solid Oak Sketches, LLC v. Visual Concepts LLC, 2K Games Inc., Take Two Interactive Software, United States District Court, Southern District of New York, No. 16-00724. Confidential Settlement Communication.

[16]http://espn.go.com/nba/story/_/id/14693836/makers-nba2k-sued-graphically-representing-tattoos-players-permission

[17] 3 Melville B. Nimmer and David Nimmer, Nimmer on Copyright §10.03[A] [7] and §12.11(D) (2006).

[18] 15 U.S.C. § 1125. See, New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 308 (9th Cir.1992).

[19] http://espn.go.com/nba/story/_/id/14693836/makers-nba2k-sued-graphically-representing-tattoos-players-permission.

[20] “NBA 2K16: Breaking Down Best New Features for This Year’s Game,” BleacherReport.com, Aug. 31, 2015,

available at http://bleacherreport.com/articles/2558410-nba-2k16-breaking-down-best-new-features-for-this-yearsgame.

Golan v. Holder, 565 U.S. __ (2012), decided January 18, 2012 – The Supreme Court Allows Equal Copyright Treatment of Foreign Authors

January 25, 2012 articles Comments Off on Golan v. Holder, 565 U.S. __ (2012), decided January 18, 2012 – The Supreme Court Allows Equal Copyright Treatment of Foreign Authors

 

Against the backdrop of legislative activity in the Congress aimed at curbing online piracy of copyrighted works, the Supreme Court has ruled in favor of an existing law that strengthens the protection of U.S. copyright works overseas by adherence to global treaties. In affirming the constitutionality of  §514 of the 1994 Uruguay Round Agreements, which codified the extension of copyright coverage to works still protected in their own countries but not in the United States, the Court ruled against the petitioners, including orchestra conductors, musicians, publishers and others who formerly enjoyed free access to works that §514 removed from the public domain. These parties asserted that a work that has entered the public domain, for whatever reason, must forever remain there.

The works in question never enjoyed copyright protection here for any of three reasons: the United States did not protect works from the country of origin at the time of publication; the United States did not protect sound recordings fixed before 1972; or the author had failed to comply with U.S. statutory formalities, which are no longer required as prerequisites to copyright protection. The Court allowed the restoration of the copyright protection foreign works would have enjoyed had the United States maintained copyright relations with the author’s country or removed formalities incompatible with the Berne Convention for the Protection of Literary and Artistic Works, which the U.S. joined in 1989. Foreign authors, however, did not get credit for the protection they lacked in the years prior to the enactment of §514, and therefore enjoy fewer total years of exclusivity than do their U.S. counterparts. The foreign works which had their copyrights restored “subsist for the remainder of the term that the work would have otherwise been granted if the work never entered the public domain.”

The decision emphasized that historical practice in the interpretation of the Copyright Clause has many examples of federal acts which accorded copyright protection to works that had lapsed into the public domain, or expanded the term of protection for copyrighted works. From the First Congress in 1790 which launched the uniform national system of copyright protection, to the Sonny Bono Copyright Term Extension Act of 1998, Congress has “recurrently adjusted the Copyright Law to protect works once outside the law’s protection.” The Congress did not view the public domain as inviolate – on occasion it has seen fit to protect works and inventions once freely available, without offending the Copyright Clause. The Court also uses examples of the restoration or granting of patents for inventions which were in public use at the time of the Copyright Act’s passage, “because the Clause empowering Congress to confer copyrights also authorized patents”, which confirms that Congress has not understood the Copyright Clause to preclude protection for existing works. The argument that the petitioners put forth insisting that the “limited term” used in the Clause means that a time limit, once set, becomes fixed or inalterable, was rejected by the Court in both this case and in Eldred v. Ashcroft, which upheld the Copyright Term Extension Act in 2003. The Court said in Eldred that “the word ‘limited’ does not convey a meaning so constricted, (but) rather, the term is best understood to mean “confine[d] within certain bounds”, “restrain[ed],” or “circumscribed.” The petitioners argued that the ‘limited time’ has already passed for works in the public domain, but the foreign works in some cases received a term of “zero” years protection in the United States, and the Court asserted that “ a limited time of exclusivity must begin before it can end.”

The Court agreed with the Tenth Circuit Court of Appeals that § 514 was narrowly tailored to fit the important government aim of protecting U.S. copyright holders’ interests abroad; it also corrects the inadequate compliance with §18 of the Berne Convention, which took effect in 1886, and is the principal accord governing international copyright relations. After the U.S. joined in 1989, Congress did not fully implement Berne’s enforcement requirements, but adopted a minimalist approach, which did not sit well with other Berne members. Other countries complained about the U.S.’s refusal to grant copyright protection to their authors’ works, and some balked at protecting U.S. works until the United States reciprocated with respect to their authors’ works. This changed in 1994 with the Uruguay Round Agreements on trade related aspects of intellectual property rights, out of which came the World Trade Organization, which mandated implementation of Berne’s requirements upon pain of tariffs or cross- sector retaliation for the subject member countries. The United States’ refusal to fully comply with Berne was damaging the credibility of the U.S. as a trade partner, and U.S. negotiators reported that “widespread perception of U.S. noncompliance was undermining our leverage in copyright negotiations.”  In response to the possibility of a trade enforcement proceeding, Congress codified § 514 of the URAA at 17 U.S.C. §104A and 109(a), extending copyright protection to works that garnered protection in their countries of origin, but had no right to exclusivity in the United States for the three reasons mentioned previously. Included in the new law were several concessions to “reliance parties” which had, before the URAA’s enactment, used or acquired a foreign work then in the public domain. Reliance parties were allowed to continue to exploit a restored work until the owner gave notice of intent to enforce, and after that the reliance parties could continue to exploit existing copies for a grace period of one year. The reliance parties who had created a “derivative work” based on a restored work before the enactment of the URAA could indefinitely exploit the derivation upon payment to the copyright holder of “reasonable compensation”, as set by a district judge if the parties could not agree. This gave more rights than currently allowed by §106 of the Copyright Act to parties other than the copyright holder to make a derivative work, since for current copyrighted works it is a negotiable license, and the holder may refuse to allow any such exploitation at all.

The last point of the petitioners was that the First Amendment prohibits the restoration authorized under § 514, not only because if the “limited time” portion of the Copyright Clause, but that it restricts the economic incentive to create and disseminate ideas. As in the Eldred case, the Court asserted that the “traditional contours of copyright protection, the “idea/expression dichotomy” and the “fair use” defense serve as built-in First Amendment accommodations, which were left undisturbed by the new law. The idea/expression dichotomy, codified at Copyright Act at 17U.S.C. §102(b), provides that copyright does not protect “…any idea, procedure, process, system, method of operation, concept, principle or discovery … described, explained, illustrated or embodied in [the copyrighted] work.” This section “strikes a balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting the author’s expression.” The second contour, the “fair use” defense, is codified at 17U.S.C. §107, and allows fair use of a copyrighted work for purposes of criticism, comment, news reporting, teaching, scholarship or research, and affords considerable latitude for those purposes and even for parody. The petitioners, who enjoyed unlimited use of copyrighted works before §514’s enactment, argued that the limited rights they retain under the copyright law’s “built-in safeguards” are no substitute for their previous free use. The Court rejected that view, reminding the petitioners that public domain works cannot be copyrighted, even by the creator, and that “once the term of protection ends, the works do not revest in any rights holder, [and] no one, after the copyright term has expired, acquires ownership rights in the once-protected works.”

The dissent focuses first on a claimed inhibition of dissemination of the restored foreign works due to higher consumer prices or administrative costs in finding the owner and striking a bargain. The restored copyright holders can now charge higher fees for works that consumers previously used free, and in the case of certain derivative works, can charge what the market will bear. As previously mentioned however, the new law assures that derivative works made from the restored work have a statutory right to continue to exploit the work in that way, while makers of any new derivative works using copyrighted works of  any type must negotiate with the rights holder and may be refused the right to make the work. The dissenters also put forth the argument that the new law will aggravate the “already serious problem of cultural education in the United States” due to school orchestras or other nonprofit organizations not being able to afford the new charges.

Despite the dissenters’ concerns, I found the constitutional and other arguments of the conductors, musicians and others to be convincingly addressed by the majority in Golan v. Holder, as they were in the companion case of Eldred v. Ashcroft. If the United States expects foreign countries to help expand the worldwide availability of their markets to U.S. authors, and invigorate protection against piracy of U.S. works abroad, the tradeoff of restoring some foreign works from the public domain is worthwhile. As the Court definitively holds, “neither the Copyright and Patent Clause nor the First Amendment makes the public domain, in any and all cases, a territory that works may never exit.”

© 2012 Mary Ellen Tomazic