Tattoos, athletes and image rights
LeBron James. Zlatan. Mike Tyson. What is the common factor? Aside from achieving success at the highest level of their respective fields, they are also the bearers of numerous and distinctive tattoos. Tattoos on celebrities – and particularly athletes – have become increasingly ubiquitous, with some gaining significant media attention. For example, Raheem Sterling’s tattoo of a gun on his right leg received extensive press coverage in 2018.
Brand campaigns featuring athletes in many cases include visible tattoos and a number of recent legal cases demonstrate the issues that may arise. Typically the tattoo artist will argue that they own the copyright in the tattoos they created and should therefore receive a share of the proceeds from commercialisation of images featuring the tattoo. This can result in legal action against both the recipient of the tattoo and the third party brand using the athlete’s image.
Recent US case law
One of the most famous cases on this issue is the 2011 Victor Whitmill v Warner Brothers case. Mr Whitmill, a tattoo artist, sued Warner Brothers for its use of Mike Tyson’s facial tattoo in its promotion of The Hangover Part II. Mr Whitmill argued that he owned the copyright in the tattoo. He was able to prove that Mr Tyson had signed an agreement confirming that Mr Whitmill owned all the rights in the tattoo, and was able to obtain a settlement from Warner Bros.
More recent case law has not been as straightforward, however. The two most recent cases, both litigated in the US, have provided contrasting outcomes. First, Solid Oak Sketches (“SOS”), a tattoo artist company, sued video game publisher Take-Two Interactive (“TTI”) for its reproduction of Le Bron James’ tattoos – which SOS’s artists had designed - on its NBA 2K videogame series. In March 2020, a federal US district court in New York ruled in TTI’s favour, stating that whilst SOS did own the copyright in the tattoos, it had granted James an implied licence to include his tattoos as part of his likeness when commercialising his image, and also that TTI’s use of the tattoos in the videogame constituted fair use (which is an exception to copyright infringement under US law).
However, in a separate case brought by tattoo artist Catherine Alexander, also against TTI, this time for its reproduction of wrestler Randy Orton’s tattoos in its WWE 2K videogame, a contrasting outcome was reached. A federal US district court in Illinois found in favour of Ms Alexander, despite similar fact patterns between the two cases. In this case the Court stated that it was not clear on the evidence submitted that a licence from Ms Alexander to Mr Orton to commercialise the tattoos had been granted, and that as it was a triable issue of fact, such a licence shouldn’t be implied. It also found that TTI’s use of the tattoos did not meet the criteria for the fair use doctrine to be applied.
The contrasting case law from across the Atlantic will be unhelpful in clarifying the position around copyright in tattoos for those seeking to litigate in America. In particular, there remains some doubt as to whether or not licences for athletes to commercialise their tattoos are implied upon creation, nor when the fair use exception may apply.
Whilst this issue has not yet been tested in the UK, it is likely that the position under English law – which we set out below – may pose similar difficulties if and when a similar dispute is brought before the English courts.
The position at English law
English law provides that copyright subsists in original artistic works, including tattoos, from creation until 70 years after the death of the artist. Ownership of the works belongs to the creator of the work (or the employer of the creator, if the work was created in the course of employment) unless and until ownership is assigned to a third party. Unlike the US, the UK has no system of copyright registration, so documentation proving a chain of title is needed to prove ownership of copyright when this is in dispute.
Therefore, in the absence of an assignment from a tattoo artist to the recipient of a tattoo, the copyright in that tattoo would normally be owned by the artist (or his/her employer). The UK does have a fair dealing doctrine which may protect third parties, whose use of athletes’ tattoos may be innocent or purely incidental, but would be unlikely to protect an athlete who had inadvertently granted the rights in their tattoo to a third party without an assignment or licence from the tattoo artist in place.
Further issues may arise in respect of the artistic work itself, which may or may not be an original artistic creation and may in fact include images, logos or song lyrics created by third parties. This may simply be copying an existing image in which copyright subsists or more esoteric. For example, former Manchester United footballer Marcos Rojo recently revealed a tattoo featuring an image of Diego Maradona in the style of Fidel Castro. Were Rojo’s image featuring the tattoo to be commercialised, issues may arise regarding potential image rights held by the estate of El Diego. Castro’s estate would presumably be less likely to become embroiled in an image rights dispute.
In any event, it is becoming increasingly common for brands to request express clauses that deal with tattoos and their ownership when negotiating image rights agreements with athletes.
The increasing attention being given to this area of the law means that it is important for athletes (or other individuals) who are able to commercialise their image and brands to ensure that they have taken steps to avoid litigation relating to tattoos.
Considerations for athletes
- Due diligence – prior to getting a tattoo, athletes should consider whether the tattoo is an original work or if it is a common design that has no real distinctiveness. If it is a common design then copyright is unlikely to exist as it only subsists in original works (and this could be used as a defence if a tattoo artist claimed copyright for a non-original work). The more unique the design, the more likely it is to be considered original, and the more important to obtain proper protection.
- Assignment / licence agreement –athletes should ideally negotiate an agreement with the tattoo artist (or their employer) whereby it is agreed that copyright in the tattoo will be assigned to the individual (or his/her image rights company) immediately upon creation and include warranties as to the origin of the design (i.e. if it has been created by the artist). If an assignment is not possible, a licence for the individual to commercialise and sublicense the copyright in the tattoo should be sought.
- Retrospective action - if an individual already bears a unique tattoo, it may be possible to retrospectively negotiate an assignment or licence. This may be particularly relevant where athletes have tattoos at a young age before they rise to prominence and become aware of the pitfalls outlined in the legal cases.
Considerations for brands
- Express warranties – brand endorsement contracts should include express provisions dealing with body art. Ideally a warranty from the athlete will be obtained that they have all necessary rights to grant licences for the brand to commercially exploit images featuring the body art. A fallback would be including requirements for the athlete to notify the brand of any clearances required.
- Due diligence – if a distinctive tattoo is likely to feature in images created by the brand it may be prudent to go further and actually request details of who the tattoo artist was, who created the image and review copies of any assignment / licence agreements the athlete obtained.
- Editing out – if there is doubt of clearances, problematic tattoos can be covered or edited out of images.
- Use CR7 instead – Cristiano Ronaldo is famously tattoo-free and no such issues arise (for now at least).
Conclusions
Given the even increasing ubiquity of tattoos and increased awareness of rights, it is almost certain that this will become a more common area of dispute in the future. Tattoo artists will understandably wish to benefit from rights that they may have under the law, and individuals and organisations who have entered into agreements to use those individuals’ images, will want to avoid costly and lengthy litigation over something that, at creation, would have been unlikely to have been a contentious commercial issue.
So think before you ink, and ideally call a lawyer.
