In Solid Oak Sketches, LLC v. 2K Games, Inc. et al., No. 16-CV-724-LTS-SDA, 2020 U.S. Dist. LEXIS 53287 (S.D.N.Y. 2020), the Southern District of New York granted summary judgment dismissing Plaintiff’s copyright infringement claims based on the use of Plaintiff’s copyrighted tattoos on replica NBA players in Defendant’s popular NBA 2K video game. Concluding Defendants’ use was de minimis, the Court dismissed the copyright infringement claim finding a lack of substantial similarity between the works. The Court also found the existence of an implied license as well as determined that the use was fair use.
The Defendants are developers of video games, including NBA 2K, a basketball simulation game that includes realistic rendering of NBA teams and celebrity players. NBA 2K is designed to accurately simulate the look and feel of an NBA game, including both auditory elements, such as shoe sounds on the court, noise from the crowd, shot clock warnings, etc. and visual elements, such as the players, their expressions, the audience, etc. In making these simulations realistic, the Defendants include the personal characteristics of the players such as their hairstyles and tattoos “to accurately depict the physical likeness of the real-world basketball Players as realistically as possible.” In creating the game, Defendants obtained permission and licenses from the NBA and the individual players to use the name and likeness of the players.
Through accumulation of copyrights from the tattoo artists, the Plaintiff acquired and owns copyrights to various tattoos depicted on several well-known basketball players, including LeBron James, Eric Bledsoe, and Kenyon Martin (the “Players”).
The Plaintiff holds an exclusive license to the tattoo designs, but does not have any right to the Players’ likenesses. Nevertheless, Plaintiff claimed the Defendants infringed the Plaintiff’s copyright by publicly displaying the works in NBA 2K.
To establish copyright infringement, a plaintiff must show that the defendant copied the work and that a substantial similarity exists between the defendant’s work and the protectable elements of the copyrighted work. The defense argued substantial similarity could not be established because the use of the tattoos in the video game was de minimis – that any similar elements are so trivial that the copying does not rise to the level of actionable substantial similarity.
When assessing a de minimis use argument, the court will look at (1) the amount of the copyrighted work that is copied, (2) the observability of the copied work—the length of time the copied work is observable in the allegedly infringing work, and (3) other factors such as lighting, focus, camera angles, and prominence. In particular, the observability of the copyrighted work in the allegedly infringing work is fundamental in this assessment. Substantial similarity is considered under the ordinary observer test — “whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.”
In granting summary judgment, the Southern District of New York determined no reasonable factfinder could find the fleeting tattoos in NBA 2K were substantially similar to those owned by Plaintiff. Although the entire tattoos are visible in the game at certain angles, the tattoos are much smaller on the computer or television screen compared to their real-life size, and they appear merely as “visual noise.” The tattoos appear on three of the 400 possible players in the game, and are neither visible during average gameplay nor are they depicted separately from the Players. Additionally, the tattoos are not displayed with enough detail for an average lay observer to identify the subject matter of the tattoo; they are out of focus and often look like undefined dark shading on the Players’ arms. The Plaintiff did not provide any evidence supporting the proposition that a user’s selection of focus and camera angles makes the tattoos more prominent. Therefore, the court found that any similarity was de minimis.
Defendants also argued they were authorized through an implied license to use the tattoos as part of the Players’ likenesses. In the Second Circuit, an implied nonexclusive license exists “where one party created a work at the other’s request and handed it over, intending that the other copy and distribute it.” Copyright owners who grant nonexclusive licenses to use the copyrighted work cannot sue the licensee for copyright infringement.
The Court found that the original tattoo artists who created the design necessarily granted the Players nonexclusive licenses to use the tattoos as part of their likeness — the Players requested the tattoos, the tattooists created the tattoos and delivered them to the Players, and the tattooists understood and intended the Players to distribute the tattoos as part of their likeness by appearing in public, on television, etc. Since the Players received implied licenses to use, distribute, and display the tattoos as part of their “likeness,” the Defendants had the right to use the tattoos to depict the Players because the Players gave the Defendants permission to use their likeness. And on that basis, the Court also dismissed the infringement claims.
Finally, the Court addressed Defendants’ arguments that their use of the tattoos in the video game is fair use. The Court weighed four factors in finding fair use: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.
Considering the nature of the use, the District Court found the inclusion of the tattoos in the video game to be transformative. Although the tattoos appearing in the video game are exact copies of the copyrighted designs, the purpose of the use was different — the Players used the tattoos to express themselves while the Defendants used the tattoos to accurately depict the Players. The size of the tattoos in the video games is significantly smaller than those in real life, approximately only 4.5% to 11% of their actual size. Because of their small size, the tattoos are difficult to see and are not often visible. Additionally, the tattoos amount to an inconsequential portion of the video game’s data (about 0.000286% to 0.000431% of the game data). Although the purpose of the video game is commercial and the use of the tattoos in the game is therefore commercial, the tattoos are merely incidental to the game’s commercial value.
Since the game does not serve as a substitute for the tattoo designs, Plaintiff has never licensed the tattoos or used the tattoos in any video game, and consumers would not buy the game just to see the tattoos on a few simulated characters, the District Court found all four factors supported fair use.
It appears the Court was most swayed by the obscure appearance and insignificant use of the tattoos in the video game. Perhaps the outcome would have been different if the tattoos were prominently featured in the game and contributed more to the game’s commercial value and appeal.