The Enforcement Challenges for Tattoo Copyrights

• Publication year: 2014
• Citation: Vol. 22 No. 1

The Enforcement Challenges for Tattoo Copyrights

Yolanda M. King

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King: The Enforcement Challenges for Tattoo Copyrights

THE ENFORCEMENT CHALLENGES FOR TATTOO COPYRIGHTS

Yolanda M. King^*

TABLE OF CONTENTS

I. INTRODUCTION.............................................................................................30

II. OWNERSHIP OF TATTOO COPYRIGHTS.....................................................33

A. OWNERSHIP V. AUTHORSHIP................................................................34
B. TYPES OF AUTHORED WORKS..............................................................36

1. Solely Authored Tattoos.......................................................................36
2. Jointly Authored Tattoos......................................................................37
3. Employer-Authored Tattoos?...............................................................41

a. Employee Work...........................................................................43
b. Independent Contractor Work......................................................46

C. COPYRIGHT OWNERSHIP AGREEMENTS.............................................47

III. ENFORCEMENT OF TATTOO COPYRIGHTS..............................................48

A. REPRODUCTION......................................................................................49
B. PREPARATION OF DERIVATIVE WORKS..............................................51
C. DISTRIBUTION.........................................................................................53
D. PUBLIC DISPLAY......................................................................................54
E. FAIR USE...................................................................................................57
F. IMPLIED LICENSE....................................................................................63
G. THIRTEENTH AMENDMENT..................................................................67

IV. CONCLUSION..................................................................................................70

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I. Introduction

A little secret to make you think: Why is the crazy stuff we never say poetry in ink?

—Lyrics from "Tattoo," by Van Halen¹

Who owns the copyright in a tattoo? Can the owner enforce a tattoo copyright, and if so, what is the scope of enforcement of a tattoo copyright? These are questions I left unresolved in The Challenges "Facing" Copyright Protection for Tattoos.² In that Article, I asserted that, despite a lack of any reported decisions, tattoos are copyrightable works. However, I noted that the related issues of ownership and enforcement are appropriate subject matter for a separate article.³ This Article is the follow-up to the first Article, a natural progression in the analysis of the application of copyright law to tattoos.

Courts have yet to address the questions of ownership and enforcement of tattoo copyrights. Only a few tattoo lawsuits have been filed in the past ten years and, thus far, no lawsuit involving the enforcement of a tattoo copyright has gone to trial.

On December 31, 2012, tattoo artist Stephen Allen instituted an action for copyright infringement against video game marketer and distributor Electronic Arts Inc. and former National Football League (NFL) running back Ricky Williams over tattoos inked on Williams's right and left arms.⁴ Allen alleged ownership of the copyrights in the tattoos, and he claimed that defendants copied, reproduced, distributed, adapted and/or publicly displayed his copyrighted tattoos on the cover of the NFL Street, Madden NFL 10, and Madden NFL 11 video games.⁵ The parties dismissed the case in April 2013.

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Christopher Escobedo, a tattoo artist based in Phoenix, Arizona, sued video game developer and publisher THQ in November 2012.⁶ Escobedo alleged copyright ownership of a lion tattoo on the right ribcage of professional mixed martial artist Carlos Condit.⁷ Further, he claimed that THQ infringed his copyright when it featured "a computer generated depiction of Mr. Condit, including an exact reproduction of the Lion Tattoo" in both the UFC Undisputed 2010 and UFC Undisputed 3 video games.⁸ Escobedo hopes to settle his case before it goes to trial.⁹

On April 28, 2011, tattoo artist S. Victor Whitmill sued Warner Bros. for infringement of his copyright in the tattoo inked on Michael Gerard "Mike" Tyson's face in Whitmill v. Warner Bros. Entertainment, Inc.¹⁰ Whitmill claimed that Warner Bros. infringed his copyright based upon the production company's unauthorized¹¹ copying of the tattoo onto the face of another actor¹²

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in its motion picture The Hangover Part II.¹³ Whitmill further claimed that Warner Bros. infringed his copyright "through its unauthorized copying, distribution[,] and public display of the Pirated Tattoo in advertising and promotion for the Movie and by making an unauthorized derivative work—namely, the Pirated Tattoo—that is based upon and copies virtually all of the copyrightable subject matter of the Original Tattoo."¹⁴ The parties reached a settlement, the terms of which were confidential, shortly following the denial of Whitmill's motion for a preliminary injunction.¹⁵

In a 2005 case, Reed v. Nike, Inc., tattoo artist Matthew Reed sued not only the advertising agency and athletic footwear and apparel company responsible for the commercial in which the tattoo at issue appeared, but he also sued the bearer of the tattoo, former National Basketball Association (NBA) player Rasheed Wallace.¹⁶ This case also settled,¹⁷ but it raised complex issues regarding ownership and enforcement of a tattoo copyright.

The objective of this Article is to address the challenges that the owner of a copyright in a tattoo will face if the owner decides to enforce her rights in court. The Article explores the complexities in determining the ownership of the copyright in a tattoo, mostly due to the fluidity and informality of the process of tattoo creation. The analysis then moves to infringement of the tattoo copyright. In order to prove copyright infringement, the copyright owner must show a violation of one of the exclusive rights of the owner. This Article examines the rights most relevant to the owner of a tattoo copyright and considers how the tattoo artist's choice of medium, the human body, affects those rights.

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Part II of the Article first evaluates how authorship of a work and copyright ownership are defined and interpreted under the federal copyright statute and related case law. It then analyzes the various types of authorship and recommends that the tattoo artist and her customer discuss copyright ownership in the tattoo prior to affixing the tattoo on the customer's body.

In Part III, the Article scrutinizes the exclusive rights of the copyright owner and the challenges faced by the owner of a tattoo copyright in the enforcement of those rights. This Part also explores constitutional limitations on enforcement of a copyright in a tattoo on someone's body.

This Article concludes with a recommendation that tattoo copyright owners pursue enforcement of their rights in court but cautions these owners that it is likely that courts will determine that the choice of a human medium necessitates the diminution of the exclusive rights of the copyright owner. While the owner of a tattoo copyright must accept that some uses of the work will be beyond her control, especially many uses of the work by the bearer of the tattoo, the copyright owner should be vigilant in enforcement of her rights against media companies and other businesses that seek to exploit the value of the work without the consent or compensation of the owner.

II. OWNERSHIP OF TATTOO COPYRIGHTS

Section 106 of the Copyright Act of 1976 provides several exclusive rights to the copyright owner of a work.¹⁸ The copyright owner has the exclusive right to, inter alia, reproduce, distribute, display, and create derivatives of the copyrighted work.¹⁹

However, before a copyright can be enforced, a court must first determine the owner of the copyright.²⁰ Section 201 of the Act states that "[c]opyright in a work protected under this title vests in the author or authors of the work."²¹

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There are exceptions to this rule, such as "works made for hire."²² Further, the author of a tattoo may transfer the copyright in the work to the customer.²³ Section 202 distinguishes ownership of a copyright from ownership of the work: "Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied."²⁴ When interpreting and applying these provisions to tattoos, it is apparent that the author of the tattoo is the owner of the copyright, but that author may not be, and in most cases is not, the person who owns the tattoo itself. The owner of the "material object" will most often be the client or customer of the tattoo artist, or the bearer of the tattoo. Thus, the critical question: Who is the author of a tattoo?

A. OWNERSHIP V. AUTHORSHIP

Congressional authority to enact federal copyright law is limited by the U.S. Constitution to the protection of the works of "authors."²⁵ Although the Copyright Act vests initial ownership of the copyright in a work to the author, Congress did not define the term "author." The Supreme Court has defined an author as "he to whom anything owes its origin; originator; maker; one who

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completes a work of science or literature."²⁶ Yet, authorship requires more than the contribution of creativity or originality to a work.²⁷ The author is the person "who superintended the whole work, the 'master mind.' "²⁸

The nature of the process by which tattoo art is created complicates the determination of authorship for the work. The author of the tattoo owns the copyright in it; however, the owner of the copyright may not be the person whose body is adorned with the tattoo. Ownership of the copyright is...