Leydig, Voit & Mayer, LTD. Intellectual Property Law

Shades of gray in tattoos, copyright

October 21, 2013

By: Lynn A. Sullivan
Chicago Daily Law Bulletin

Although tattoos, or “body inking,” as an artistic form can be traced back 5,000 years to the finding of the “Iceman” in the Alps in 1991, it is only recently that the questions have come into play regarding whether a tattoo is copyrightable and, if so, who owns the rights to it.
Does the tattoo artist that creates the tattoo own the copyright in the work or does the person whose skin becomes the work own the copyright? What if the artist inks it, but it is the design of the recipient — can it be jointly owned?
In addition to the ownership questions, does the person who owns the copyright have the ability to control the bundle of rights that comes with the copyright, such as the right to public display, derivative works or even moral rights, such as those that give the owner the right to interfere with the modification or destruction of the tattoo?
These and many other questions are now being pondered in connection with intellectual property rights surrounding tattoos and the balance of rights of the tattoo artist versus the receiver of the tattoo.
Beginning with the question of whether a tattoo is copyrightable, it can be the subject of copyright protection. It is a pictorial work in a fixed medium and as long as it is independently created with a “modicum of creativity,” it falls within the definition of copyrightable material.
As for ownership, the rights to a copyrightable work belong to the creator unless it is a “work for hire.” To be a “work for hire,” it stems from an employer-employee relationship or a commissioned work that falls within certain categories and the parties agreed in writing beforehand that the rights belong to the person commissioning the work.
In all other instances, the creator owns the rights, unless the creator assigns those rights to another.
With the resurgence of tattoo popularity, artists have begun to question the unauthorized use of their work. Very few courts have actually dealt with these conflicts and most appear to have settled out of court, such as the recent case S. Victor Whitmill v. Warner Bros. Entertainment Inc. That matter was brought by Whitmill, the tattoo artist who created Mike Tyson’s facial tattoo, which was recreated on the face of actor Ed Helms in the movie, “The Hangover: Part II.”
Whitmill claimed copyright infringement of the tattoo based on the unauthorized use of the design in the movie and on the movie posters. Since Tyson and the tattoo artist were not in an employer-employee relationship, there was no agreement giving Tyson rights beforehand and no assignment of rights to Tyson after, Whitmill argued that neither Tyson nor Warner Bros., the studio financing the film, could rightfully use his design, copy it on Helms or make derivative works of the design for movie posters.
Warner Bros. defended with a weak argument that the human body was a “useful article” that would be exempt from copyright protection. No wonder the case settled.
How far can the tattoo artist push his or her rights? Since one of the rights given a copyright owner is the right to public display, the interesting question here is whether a tattoo artist has the right to control the tattoo recipient’s public appearances and ability to be photographed showing the tattoo.
Although this has not yet been litigated, it is an interesting question as to whether the tattoo artist has the right to control all aspects of copyright ownership, including public display of the tattoo and moral rights, such as modifications to the tattoo, as in the case of when Johnny Depp, after breaking up with Winona Ryder, changed his tattoo from “Winona Forever” to “Wino Forever.”
Another surfacing case concerns tattoos of various athletes that are being used on video game characters. Several years ago, tattoo artist Christopher Escobedo created a lion tattoo on martial arts fighter Carlos Condit’s rib cage — an image that has since become quite well-known. Condit and many other athletes consider their tattoos to be their trademark.
Gaming company THQ created a video game featuring Condit and included his lion tattoo on the digital character. Escobedo sued THQ, alleging copyright infringement of his design, and demanding $4.16 million for the unauthorized use of his lion tattoo design on the 4 million units that were sold.
The case is still pending, but has been transferred to bankruptcy court due to the bankruptcy proceedings THQ finds itself in. The judge did set a value on the copyright infringement claim — but only at $22,500, the amount THQ paid Condit for using his image for the game.
Still, the question remains, can you commercially use your tattoo as a trademark — as part of your image, on a character in a video game, on an action figure or in connection with endorsing products — without the permission of the artist?
It is certainly far from clear and has become of great concern to groups such as the NFL Players Association. The NFLPA, to protect against future liability, is encouraging players getting a tattoo to obtain an assignment of the copyright design from the tattoo artist. The group is even considering requiring the players to provide proof that they own the copyright in their tattoos, or obtain signed releases from their former tattoo artists, or if not, sign an indemnification clause with the association that no action can be taken against the association.
Because of the unique nature of a tattoo being produced on one’s skin, there is an argument that if the artist owns the copyright in the tattoo, then there should be an implied license to the receiver of the tattoo allowing at least the rights of public display and reproduction through photography.
Tattoos and copyrights are currently a murky area of law with many unresolved questions on ownership and rights to a tattoo. However, one thing is for certain — an agreement on ownership and rights between the tattoo recipient and tattoo artist prior to the commissioning of a tattoo may soon become standard procedure

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