Six months after a New York federal judge held that Take-Two Interactive could lawfully replicate player tattoos in NBA 2K without paying tattooists, a federal judge in Illinois recently reached a conflicting opinion in regard to WWE 2K’s tattoos. The inconsistent rulings raise uncertainty for sports video game publishers as the PlayStation 5 and Xbox Series X soon hit the market.
Late last month, U.S. District Judge Staci Yandle denied a motion for summary judgment by Take-Two in a copyright infringement case brought by former tattooist Catherine Alexander. Alexander designed and inked six tattoos on wrestler Randy Orton between 2002 and 2008. The tattoos include tribal marks, a Bible verse, a dove, a rose and a skull.
Orton, 40, has appeared as a playable character in the WWE 2K series. To render the nine-time WWE champion, Take-Two digitally created an in-game reproduction that maximized realism—including with respect to Orton’s tattoos.
In fact, as U.S. District Judge Staci Yandle wrote in her Sept. 26 order, “WWE would have rejected Orton’s videogame persona if it appeared without his tattoos or appeared with tattoos that were different than Orton’s actual tattoos.”
Take-Two paid a license fee to WWE for what it believed was the right to invent Orton’s avatar. WWE had previously paid Orton for the right to license his name, image and likeness.
Alexander maintains it was unlawful to exclude her from this sequence of payments. She never licensed a tattoo to be replicated. In 2009, she contacted WWE to discuss a faux sleeve depicting her tattoo designs. “A WWE representative laughed at her,” Judge Yandle wrote. The representative admonished Alexander that WWE “could do what they wanted with Orton’s images because he was their wrestler.” WWE offered Alexander $450 to use her tattoos. She declined.
Take-Two contends that Alexander misunderstands the law. Alexander, the publisher insists, impliedly licensed Orton to display her tattoos as part of his own likeness. In other words, the tattoos as inked by a needle into the dermis layer of Orton’s skin—which in turn altered his pigment—arguably became part of Orton’s body. Under this interpretation, Orton granted WWE the right to license his likeness—tattoos and all.
This same argument persuaded a New York federal judge in March. In Solid Oak Sketches v.2K Games, Judge Laura Taylor Swain held in favor of Take-Two in an analogous case involving tattoos of LeBron James and other players in NBA 2K. Judge Swain concluded that tattooists realized their designs will be publicly displayed. Judge Yandle saw it differently. She stressed that it is “unclear Alexander and Orton discussed permissible forms of copying.”
Is Judge Swain or Judge Yandle correct? Ryan Vacca, an intellectual property law professor at UNH Franklin Pierce School of Law, contends that “norms in the tattoo industry” should “be very important in determining whether an implied license exists.” A key norm in Take-Two’s favor, Vacca maintains, is that “clients have the authority to display and reproduce tattoos even for commercial purposes.”
Take-Two also insists it could replicate tattoos under the doctrine of fair use, which permits copying under certain circumstances. One factor is whether the copying has a different purpose from that of the creator. Alexander asserts she and Take-Two possessed the same purpose: display tattoos on Orton’s body. Take-Two argues this is backwards. Alexander, the publisher insists, created the tattoos for Orton to display on his body whereas Take-Two transformed the tattoos as part of a new creation: a wrestling video game. Take-Two’s fair use argument succeeded with NBA 2K but has not (yet) with WWE 2K.
Vacca says the most significant area of disagreement between the two rulings concerns de minimis use. In some federal circuits, infringement requires there be a non-trivial amount of copied content. This is true in the Second Circuit (including New York and Connecticut), the Sixth Circuit (including Michigan and Ohio) and the Ninth Circuit (California and other West Coast states). However, a de minimis use defense is not established in the Seventh Circuit, which governs Illinois.
In the NBA 2K litigation, Take-Two persuasively stressed that not only were the digital tattoos a tiny percentage of the game’s data (between 0.000286% to 0.000431%) but players’ avatars appear on screen at a fraction of actual player sizes. Vacca maintains Judge Swain’s analysis cogently “explained how frequently the tattoos appeared in the video game and how obscured and fleeting they were.” In the WWE 2K litigation, Judge Yandle emphasized a de minimis defense is not supported by precedent. Vacca believes Judge Yandle’s reasoning “sets up the potential for a circuit split on this issue.” Such a split could eventually attract the interest of the U.S. Supreme Court.
Vacca explains that video game tattoo litigation bears on the topic of name, image and likeness in college sports. “If Alexander prevails,” Vacca reflects, “then athletes getting tattoos – doing something to make themselves further stand out and representing their personalities – would need to negotiate licenses with the tattoo artists to have their full personality captured.” He asks, “think about the college freshman who gets a tattoo several years before becoming a famous athlete and is now featured in a realistic videogame. This creates a windfall for the tattoo artists and puts the athlete in a bind.”
Meanwhile, sports video games are expected to thrive on the PlayStation 5 and Xbox Series X. Both next gen consoles, which go on sale next month, will feature even more realistic graphics.
Vacca believes Judge Yandle denying summary judgment in WWE 2K litigation “complicates things [for game publishers] quite a bit.” While Take-Two may ultimately prevail at trial, “by having to go to trial, this may raise a host of claims by other tattoo artists hoping to cash in.” Still, Vacca believes the actual cost for Take-Two in paying tattooists would be relatively small “given how insignificant the tattoos are to the game.”