Who owns your ink?

In August 2016 in the USA, Solid Oak Sketches LLC sued 2K Games, Inc and Take-Two Interactive Software Inc. on the basis of copyright infringement. Solid Oak Sketches LLC is the registered owner of the copyright in the tattoos of various NBA players including LeBron James and Kobe Byrant. 2K Games and Take-Two Interactive use the likenesses of these NBA players in their games such as NBA 2K14, NBA 2K15 and NBA 2K16. In these games, the NBA players are depicted as realistically as possible - down to the details of their tattoos.

Solid Oak had offered to license the use of the depiction of the tattoos to 2K Games and Take-Two Interactive. 2K Games and Take-Two Interactive refused this offer but nevertheless depicted these NBA players adorned with their tattoos, the tattoos depicted in fine detail.

Since 2016, the battle between these parties has raged on. In September this year, Solid Oak stated that its main contention was not whether 2K Games, Inc and Take-Two Interactive Software Inc. could depict the NBA players, nor even how these players were depicted, but rather that Solid Oak’s copyrighted works were so brazenly represented in a game sold for profit, without permission or licence.

This case takes for granted that tattoos can be the subject of copyright in the first place - one cannot license the use of copyright if it does not exist in the work. Also, in the US, copyright can be registered and Solid Oak is the registered owner of the copyright in the tattoo. In South Africa, however, copyright, for the most part, cannot be registered.

So, if this case was heard in South Africa, would our courts hold that a tattoo can be the subject of copyright protection? Also, who would own that copyright?

The Copyright Act 98 of 1978 determines that a work may be the subject of copyright protection if it (amongst other requirements) is a work as defined in this Act; if it is original; and if it is reduced to material form.

Theoretically then, copyright could subsist in a tattoo as a tattoo is an artistic work (one of the works defined in the Copyright Act), if it is original (it has not been copied from another work i.e. it is a custom design) and it is reduced to material form. However, this can become quite problematic when someone infringes the copyright in your tattoo. How would you enforce your right if someone copied your tattoo by getting the same tattoo? One certainly cannot get a court order for the removal of a leg or an arm. Would one request a lifelong royalty?

Importantly also, who owns the copyright in a tattoo? The general rule is that the author of the work is the owner of the copyright in the work. However, the Act contains certain exceptions. For example, if you work for a newspaper or publication, and the work in question was created in the scope of your duties, the copyright belongs to the publication. Similarly, if the work was created in the scope of your duties in your employment with any employer, the copyright in the work belongs to your employer. Lastly, if someone is commissioned to create a closed list of works, the person commissioning the work is the owner of the copyright in the work. This closed list does not include an artistic work and does not include a tattoo. Even if you commission the tattoo and pay for it, according to the Act, the copyright would be owned by the tattoo artist.

So, unfortunately, the copyright in the ink on your arm - even though it’s the stylised date of birth of your child or it says, in a stylised form, “I love my Mommy” - is probably owned by the tattoo artist.

This raises interesting questions about the right of the tattooed individual to display her own image and to reproduce the tattoo which has become a feature of her body. As the tattoo artist is the owner of the copyright, traditional remedies for infringement (e.g. interdicts or destruction of the infringing materials) are obviously not available as these would lead to violations of bodily integrity or violations of a person’s right to choose and continue in a profession (for example, a model’s right to sell photographs of himself).

In the case of LeBron and the other NBA players, it seems to me that the most practical way to avoid a debate over the use of copyrighted tattoos is to make sure that the copyright in a tattoo is assigned to the person who is tattooed. This is especially true for celebrities and sports stars who license their image for product endorsements.

Date published: 13 November 2018
Author: Natalie Slabbert