National Tattoo Day, 17 July 2020 – Part II

Who owns your tattoo? It may not be you…

Part II Infringement issues, US and UK cases of ink in the mainstream, and tips and resources for further information.

Today we celebrate National Tattoo Day which recognises the history, culture, and artists dedicated to etching ink permanently on the skin.

In Part I Louise Brunero from Solubility considered the question of who owns the intellectual property in your ink in Australia (please follow the link if you missed Part I yesterday).  In Part II Louise considers possible infringement issues and discusses some high-profile cases from the US and UK where ink in the mainstream has caused headaches for film producers, video game makers and big name advertisers alike.  Louise also provides some tips for people wishing to use tattoos in their films, marketing campaigns or other projects and on moral rights. 

Tips for those wishing to use tattoos in their films, marketing campaigns or other projects and on moral rights

• If you wish to film someone or feature them in an advertising campaign and they have a tattoo which you intend to feature prominently, find out if they own the copyright in the tattoo.  If not, you may need to seek permission of the copyright owner. 
• If you wish to use a tattoo design in advertising, packaging designs, promotional materials etc, you should similarly find out who owns the copyright in the tattoo and seek permission before use.
• Don’t forget if copyright subsists in a tattoo, then there are also moral rights in that work.  Those rights are separate to copyright and are personal to the artist who applied the tattoo.  Moral rights cannot be assigned but consent can be given to acts that would otherwise be a breach of a moral right.  Such consent should be in writing and specify the acts to which consent is given.

Infringement issues

The owner of copyright has the following exclusive rights.

• To reproduce the work, e.g. by making a hand copy, taking a photograph of the work or filming it.
• To publish the work, e.g. by publishing photographs of the work in a magazine.
• To communicate the work to the public, e.g. by posting images of the work to social media accounts or broadcasting such images.

Where copyright subsists in a tattoo, infringement issues may therefore arise in many different contexts, such as:

• getting a tattoo that copies someone else’s tattoo;
• photographing a person with his/her tattoo;
• featuring a tattoo in a film plot;
• advertising which features the tattoo; or
• applying a tattoo image to products.

These issues can be especially important where the tattoo is worn by, and associated with, a famous person.

There is no case law in Australia which directly addresses these issues but guidance can be found in cases from the US and experiences in the UK. For instance, where the wearer of a tattoo is not the copyright owner it is likely in Australia the law would provide the wearer with an implied license to go about their daily life including displaying their tattoo in public and in photographs of that person in their ordinary life (including uploading to personal social media accounts).  However, as has been found in the US, it is likely that this implied license would not extend to the wearer using the tattoo for commercial gain such as featuring the tattoo prominently in an advertising campaign, a film plot, or even in a video game.

Prominent display and use of an original tattoo in a film plot

Prior to the release of The Hangover II in 2011, Mike Tyson’s tattoo artist, S Victor Whitmill sued Warner Bros. Entertainment Inc. (Warner Bros.), trying to stop the film from being released. In the movie plot, after a night of heavy drinking Mike Tyson’s famous face tattoo appears on Ed Helms’ character ‘Stu the dentist’. 

Whitmill, a well-known and award-winning tattoo artist, based his claim on copyright infringement.  He was the creator of the original tattoo design and at the time he completed the tattoo he had Tyson sign a document that confirmed that Whitmill owned the copyright in the artwork.  He sued Warner Bros. for their use of the tattoo in both the film and in the film advertising and promotions without his permission and without crediting him as the creator of the original work.  Warner Bros. was so concerned that it said in a court filing that it would digitally alter the facial design for the DVD release.

The case ultimately settled out of court and Warner Bros. concerns appear to be well founded.  In a 2011 Federal Court hearing as the case progressed, Judge Catherine D. Perry made clear that “Of course tattoos can be copyrighted… I don’t think there is any reasonable dispute about that.”

Warner Bros. argued the depiction of the tattoo was parody and protected as fair use. But the judge disagreed, “This use of the tattoo did not comment on the artist’s work or have any critical bearing on the original composition”. She also noted “There was no change to this tattoo or any parody of the tattoo itself”.

Prominent display and use of an original tattoo in advertising and promotional material

High profile sports stars and celebrities have great brand and marketing appeal.  If they have distinctive, original tattoos they may wish to use in advertising campaigns or on promotional packaging.  For example, a distinctive tattoo featuring on a perfume bottle label design would readily associate the product with the well-known sports star or celebrity.  Without an assignment of copyright from the tattooist, use of the tattoo might infringe their copyright.

In 2005, Manchester-based celebrity tattoo artist Louis Malloy threatened to sue English Professional Footballer David Beckham if Beckham proceeded with an advertisement which focused on the tattooist’s ‘Guardian Angel’ tattoo which was created by Malloy in an art deco design and featured angle wings spanning shoulder to shoulder.  The tattoo artist reportedly tried to negotiate a licence agreement, but ultimately didn’t pursue the matter further.

Tattoo display in video games

Video game makers Take-Two Interactive Software have also found themselves on the receiving end of copyright infringement claims when its video game NBA 2K16 was released featuring, and reproducing distinctive tattoos of, big name players from the NBA such as LeBron James, Kobe Bryant and DeAndre Jordan. Tattoo parlour Solid Oak Sketches sued the game makers for reproducing the player’s tattoos in the video game, claiming to have licences over several of the players’ tattoo designs and sought more than US$1.1 million for a licence to use the tattoo designs in the video game.  Similar cases have also involved NFL players and the National Football League Players Association has since warned players to seek copyright assignments, licences or waivers from their tattoo artists to guard against lawsuits in the event images of the tattoos are used, intentionally or not, in advertisements, video games and other media.

What about Moral Rights?  Can they also be infringed?

Moral rights are personal to the artist of a copyright work and are separate to copyright rights in that work.  Moral rights always remain with the artist even if the copyright is owned by someone else (such as the wearer or employer/tattoo studio owner).  Where copyright subsists in a tattoo, the tattooist as the artist would also have moral rights in respect of the tattoo (that is the right of attribution, the right not to have their work falsely attributed and the right to integrity of the work). 

However, there are ‘reasonableness’ exceptions to some of these moral rights.  For example, it is not an infringement not to identify the tattooist if it is reasonable in the circumstances not to do so. It is also not an infringement of the right not to have the work subjected to derogatory treatment if the treatment was reasonable in the circumstances. There is no ‘reasonableness’ exception for false attribution.  

The US case from 2005 involving a Nike advertisement that focused on the tattooed arm of pro-basketball player Rasheed Wallace should serve as a warning here. The claim centred on copyright infringement of the tattoo where copyright was owned by the tattoo artist, but Wallace was also sued. This was based on Wallace allegedly holding himself out as the exclusive owner of the tattoo to Nike and in the advert, which sees him describe and explain the meaning behind the tattoo.

Considering these cases, the position taken in Australia is likely to be to permit the tattoo being displayed or photographed for personal use, but preventing commercial use without the copyright owner’s permission. Similarly, a tattoo appearing incidentally in a film or broadcast (such as a live basketball match or in an interview) is likely to be within an implied licence, but a plot focus on the original work will likely require permission of the copyright owner. It’s also important to remember that a tattoo artist could also have a moral rights claim in addition to any copyright claim that could be brought in relation to a tattoo.

Want more information?

In December 2019, the Australian Copyright Council published a comprehensive free information sheet on Tattoos & Copyright. A link to the PDF can be found here and is a must read for tattooists and other body artists, people who have (or are thinking of getting) tattoos or other body art, and people wishing to use tattoos or body art in their films, marketing campaigns or other projects. 

The Arts Law Centre of Australia is a community legal centre which provides a number of legal advice services to artists and arts organisations. You can contact them here for more information on the copyright, licensing, infringement and moral rights issues described above. Solubility staff have been on the Arts Law Centre’s volunteer advice panel for over 15 years and have provided advice to dozens of artists.

If you need help with copyright assignment agreements, licences or moral rights consent forms or you want to know more about copyright and moral rights in tattoos please get in touch with our team at Solubility.

You can also follow Solubility and me on LinkedIn and Solubility on twitter. We look forward to seeing you again for some more Everyday IP.