Remember two years ago when there was fear that the release of the much-anticipated movie “The Hangover Part II” would be delayed due to a possible lawsuit relating to the Mike-Tyson-esque tattoo on actor Ed Helms’ face? Well, the tattoo-copyright dragon has reared its fearsome head once again. Recently the NFL Players Association, the labor organization that represents the 2000+ players in the National Football League, recognized the extensive possible liability it faces when it licenses the images of players with tattoos.

In recent years an increasing number of athletes have chosen to get inked up, leading to possible confrontations between tattoo artists, who claim ownership of the copyright of the tattoo, and athletes, players associations, and corporations who are profiting significantly off licensing and use of such athletes’ images in advertisements, video games, and other licensed products.

This is not the first time that athletes have been sued by their tattoo artists over the display of their works in advertisements or on commercial goods. In 2005 Nike was sued by NBA bad boy Rasheed Wallace’s tattoo artist over the display of his $450 tattoo in an advertisement for Wallace’s Nike basketball shoe. Just last year, video game developer Electronic Arts and former NFL running back Ricky Williams [paywall] were the subject of a lawsuit by a Louisiana tattoo artist who claimed he owned the copyright to one of Williams’s tattoos, which appeared on the cover of EA’s 2004 video game “NFL Street.” Another athlete, MMA fighter Carlos Condit, was the subject of a lawsuit over the display of his tattoo in a video game. Unfortunately, however, most of these lawsuits get settled out of court, so there is scant law on the application of copyright law to athletes’ tattoos in advertisements and on commercial goods. That doesn’t mean, however, that one of these suits will not eventually makes its way to trial, potentially opening up the NFLPA, video game developers, or athletic apparel companies to significant liability for copyright infringement.

If tattoos are considered “pictorial, graphic, [or] sculptural works” under § 102(a)(5) of the Copyright Act, they would clearly be within the domain of copyright-protectable works. The only other issue then is whether tattoos are considered “works made for hire.” Tattoos are typically not “prepared by an employee within the scope of his or her employment” since the tattoo artist is unlikely to be an employee of the athlete. Therefore, the only way for the athlete to argue that he or she owns the copyright to the tattoo is to convince a court not only that the work was “specially ordered or commissioned for use as a contribution to a collective work,” but he or she must also demonstrate that “the parties expressly agree[d] in a written instrument signed by them that the work shall be considered a work made for hire.” It is doubtful that any of these athletes had the forethought to bring along a legally enforceable agreement establishing the tattoo as a work for hire and assigning the copyright to the athlete. It is for this reason that the NFLPA has recently requested that all its players seek out their tattoo artists and obtain releases transferring ownership of the tattoo to the player. It also asked its members to indemnify the NFLPA from any lawsuits pertaining to licensing and use of the athletes’ images that include the tattoo, and in the future to receive signed releases from tattoo artists for any subsequent tattoos.

In the end, however, it is the tattoo artist that retains the upper hand in these negotiations. Given that licensing of athletes’ images is big business, they may be able to negotiate for a larger fee for the tattoo in order to agree to transfer ownership of the copyright. However, tattoo artists who have already inked an athlete may be somewhat limited in enforcing ownership of their works of art. While the Copyright Act does permit destruction of infringing works, that would be unlikely to be applicable here. Artists may try to obtain an injunction stopping distribution of the infringing works, like the tattoo artist in the “Hangover 2″ case. Such an injunction is possible if a court deems it “reasonable to prevent or restrain” such infringement. The statute allows the artist to seek either actual damages or statutory damages, but this may be severely restricted in tattoo cases. Statutory damages require the artist to have registered the work, an act that most tattoo artists are unlikely to undertake (or even be aware of). To recover actual damages the artist would have to prove damage suffered as a result of the infringing use as well as any profit the infringer made that is attributable to the infringement. However, in Davis v. The Gap, Inc., the Second Circuit held that where the parties could have agreed on a licensing fee, damages may be limited to whatever a reasonable licensing fee would have been ex ante. In these cases, just as in Davis, such a reasonable licensing fee would probably be relatively small (it was determined to be only $50 in Davis).

The NFLPA was correct in identifying the issue of copyrighted tattoos, but because many players have already obtained their tattoos, there may be little that can be done after the fact. Tattoo artists are unlikely to sign a transfer of rights now that they know they are likely the rightful owners of the copyrighted tattoos. And the more often excessively-tattooed, prominent athletes (like the NFL’s Colin Kaepernick, NBA star Lebron James, and MMA fighter Thiago Silva) appear in advertisements, videos games, and the like with their tattoos visible, the more susceptible they become to possible copyright infringement liability. It may only take one tattoo artist to file suit–and avoid the temptation of settlement–in order to settle this question in the law. How much are tattoos worth to these athletes? We may never know.

–Andrew Solinger

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One Response to Inked-up Athletes May Need to Pay Up

  1. Jacob Schumer says:

    Is human skin a “tangible medium” upon which art can be “fixed”? If yes, does that mean a tattoo removal would be violating the tattoo artist’s moral rights (under some treaties)? Fun, dumb questions to be answered here.