Tattoos, Athletes, and Image Rights

8 Min Read By: Richard Davies, Rahim Hirji

LeBron James. Zlatan Ibrahimović. Mike Tyson. What is the common factor? Aside from achieving success at the highest level of their respective sports, 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, a striker for the English Premier League side Manchester City and England national team, has a tattoo of a gun on his right leg that received extensive press coverage[1] in 2018.

Further, it is not uncommon for brand campaigns to feature athletes with visible tattoos. This article will discuss a number of recent legal cases that demonstrate several issues that may arise when those tattoos are visible in the advertisement. 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 commercialization of images featuring the tattoo. This can result in legal action against both the bearer of the tattoo (the athlete) and the third-party brand using the athlete’s image. This article examines recent American case law on the issue and the position under English law.

Recent US Case Law

One of the most famous cases in which a tattoo artist asserted claims based on the unauthorized use of their work is Victor Whitmill v Warner Brothers.[2] In this 2011 case, the tattoo artist (Mr. Whitmill) sued Warner Brothers for its use of Mike Tyson’s facial tattoo in its promotion of the film The Hangover Part II. Mr. Whitmill argued that he owned the copyright in the tattoo and produced an agreement signed by Mr. Tyson confirming that Mr. Whitmill owned all the rights in the tattoo. The parties subsequently settled the matter.

Two more recent cases have provided contrasting outcomes. First, in Solid Oak Sketches, LLC v. 2K Games, Inc. and Take-Two Interactive Software, Inc.,[3] Solid Oak Sketches (“SOS”), a tattoo artist company, sued video game publisher Take-Two Interactive (“TTI”) over TTI’s reproduction of LeBron James’ tattoos—which SOS’s artists had designed—on its NBA 2K videogame series. In March 2020, Judge Laura Swain of the U.S. District Court for the Southern District of New York ruled in TTI’s favor.[4] Judge Swain held that although SOS owned the copyright in the tattoos, it had granted James an implied license to include his tattoos as part of his likeness when commercializing his image, and also that TTI’s use of the tattoos in the videogame constituted fair use (an exception to copyright infringement under US law).

However, another court reached a different outcome in a separate case with strikingly similar facts. In Alexander v. Take-Two Interactive Software, Inc.,[5] a case filed in the Southern District of Illinois, tattoo artist Catherine Alexander filed suit against TTI for its reproduction of wrestler Randy Orton’s tattoos in its WWE 2K videogame. There, on a summary judgment motion, the court ruled in favor of Ms. Alexander,[6] holding that it was not clear on the evidence submitted that Ms. Alexander had granted Mr. Orton a license to commercialize the tattoos she had designed, that such license should not be implied, and therefore whether such license had been granted should be tried. The court also held that TTI’s use of the tattoos did not unambiguously constitute fair use and so was an issue to be decided at trial. At the time of writing, the case remains awaiting trial.

As these conflicting decisions demonstrate, it is not yet clear whether athletes are granted implied licenses to commercialize their tattoos after creation and installation (as it were). Indeed, it is possible in the short-term that the answer may depend upon the jurisdiction in which the athlete was tattooed. Nor is it clear at the moment whether a third party’s display of an athlete’s tattoos constitutes fair use under federal copyright law.

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 does not maintain a copyright registration system, so documentation proving chain of title is needed to prove copyright ownership.

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. It is questionable, however, whether that doctrine would protect an athlete who had inadvertently granted the rights in his or her tattoo to a third party without first obtaining an assignment or license from the tattoo artist.

Further issues may arise with respect to the artistic work itself when the tattoo reproduces an image, logo or song lyrics previously created by another third party. For example, Manchester United and England footballer Jadon Sancho has a prominent tattoo on his arm featuring characters from The Simpsons animated sitcom, in respect of which third party rights almost certainly exist. Were Sancho’s image, featuring the tattoo, to be commercialized, it is possible that entities with rights in The Simpsons IP[7] could assert claims against Sancho and any entity to whom he had granted a right to display the image.

In light of the uncertainty surrounding these complex issues, it has become increasingly common for brands to include express clauses dealing with tattoo ownership when negotiating image rights agreements with athletes.

Likewise, it is important for athletes with tattoos and their business partners to consider the issues that might arise from commercializing the athlete’s image and likeness, including his or her tattoos.

Considerations for Athletes

  1. Due diligence: Prior to getting a tattoo, athletes should consider whether the tattoo is an original work, a common design that is not particularly distinct, or a reproduction of potentially copyrighted work (song lyrics, e.g.). If the tattoo is a common design, then the artist is less likely to have a copyright in the work. If the tattoo contains work possibly copyrighted by someone other than the tattoo artist, this can complicate things even further for the athlete and his or her business partners. Likewise, the more unique the design, the more likely the tattoo will be considered original, in which case it will be more important for the athlete to address copyright and license issues with the artist. Additionally, an athlete may want to consider the law of the jurisdiction in which he or she is planning to get tattooed.
  2. Assignment / license agreement: Athletes may want to 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 athlete (or his/her image rights company) immediately upon creation. Athletes may also seek representations and warranties regarding the origin of the design, and indemnification from the artist, so as to avoid liability to any unknown third party who may later claim to have created the design. Alternatively, the athlete may consider seeking a license to commercialize and sublicense the copyright in the tattoo.
  3. Retrospective action: In the case of already-existing tattoos, athletes still may consider negotiating an assignment or license from the artist. Of course, athletes should give thought before approaching artists, as this may bring an issue to the artist’s attention of which he or she was not previously aware.

Considerations for brands

  1. Express warranties: Brand endorsement contracts should include express provisions addressing body art/tattoos. Brands should seek representations and warranties that the athlete has all necessary rights to grant licenses to commercially exploit images featuring the body art/tattoos, and indemnification if such representations and warranties are false or inaccurate. 
  2. Due diligence: It may also be prudent for brands to request that the athlete identify the artist who created any tattoo that is likely to be displayed in a commercial venture, and where the tattoo was received. Brands should review any agreements or licenses that the athlete obtained from the artist.
  3. Editing out: If there is doubt surrounding the right to display an athlete’s tattoos in a commercial enterprise, the brand may consider covering up or digitally editing out such tattoos.

Conclusions

Given the increasing ubiquity of tattoos and corresponding assertion of copyright 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 organizations who have entered into agreements to use those individuals’ images will want to avoid costly and lengthy litigation. As a result, it is important for athletes to be aware of these issues before getting tattooed, and brands before entering into commercial ventures with athletes who have tattoos.


[1] See, e.g., https://www.bbc.com/news/uk-44285455 and https://www.theguardian.com/football/2018/may/29/footballer-raheem-sterling-defends-gun-tattoo.

[2] 1-cv-00752 (E.D. Mo. April 28, 2011).

[3] 449 F. Supp. 3d 333 (S.D.N.Y. 2020)

[4] Full text of the Opinion is available at: https://casetext.com/case/solid-oak-sketches-llc-v-2k-games-inc-2017.

[5] 489 F. Supp. 3d 812 (S.D. Ill. 2020).

[6] Full text of the Opinion is available at: https://casetext.com/case/alexander-v-take-two-interactive-software-inc-4.

[7] For instance, creator Matt Groening, or the current owner FX Networks, LLC, a subsidiary of the Disney General Entertainment unit of The Walt Disney Company.

By: Richard Davies, Rahim Hirji

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