CURRENT IP ISSUES: FROM TATTOOS TO DANCE MOVES LOS CABOS, MEXICO

1

PLEASE DO NOT CIRCULATE. FOR CONFERENCE PURPOSES ONLY [email protected]

Friday, May 17, 19 INTRODUCTION

2 • Recent lawsuits testing copyright laws in a time of advanced technology in game development. • Tattoos • Game developers accused of infringing the copyrights involving tattoos appearing on athletes. • Tattoos digitally recreated on player avatars by game developers. • Disputes have been settled out of court and prior to any decision rendered about whether tattoos are copyrightable. • Dance Moves • Game developers accused of using dance moves in violation of dancer’s copyright and rights of publicity.

Friday, May 17, 19 TATTOOS-RECENT CASES

3 ! Artists sue a number of companies including game publisher (2K), developer (Yuke’s), and sports licensor (WWE) for copyright infringement. ! Artist’s tattoos appeared on the wrestler Randy Orton in a wrestling video game. ! Game developers recreated the tattoos on the wrestler. ! See https://www.scribd.com/document/ 389959215/20181002-First-Amended-Complaint- Alexander-vs-Take-Two-2K-WWE-Visual-Concepts- Yukes

Friday, May 17, 19 TATTOOS-BASKETBALL GAMES

4 ! Artist sues for copyright infringement when his work involving tattoos appear in various 2K basketball games. ! Artist inked a number of tattoos on NBA players including LeBron James and other former Cleveland Cavalier players. ! James Hayden v. 2K Games, Inc., Take Two Interactive Software, Inc. https://www.courthousenews.com/wp-content/uploads/ 2017/12/James-Hayden.pdf

Friday, May 17, 19 SOLID OAK-BASKETBALL GAMES

5 ! Solid Oak sues for copyright infringement involving 5 tattoos depicted in Take-Two’s NBA 2K. See Solid Oak Sketches, LLC. v. 2k Games, Inc. and Take Two Interactive Software, Inc. ! Solid Oak acquires the rights from the tattoo artists. ! Initially sought $800,000 as a settlement. ! Proposed to Take-Two a perpetual license fee for an additional $1.1 million. http://www.sportingnews.com/us/other-sports/news/ lawsuit-filed-over-copyrighted-tattoos-on-players-in-nba-2k16- lebron-james-kobe-bryant/15pm9g4a2xfdr1xkz6hnfjry3h

Friday, May 17, 19 SOLID OAK

6

! Some issues regarding the suit: • Prominence of tattoos. How much a factor? • How did Solid Oak calculate this number? • Claimed owed $572,000 for infringement. • Based on a previous court awarded number involving a tattoo that appeared on a UFC fighter in a THQ video game. See page 10 • Bankruptcy court awarded $22,500 but assumed settled for more. • Number of sales of game. • Argued value greater than $572,000 because 2 tattoos featured on game’s box cover.

Friday, May 17, 19 PREVIOUS CASES: RICKY WILLIAMS CASE

7 ! Tattoo artist sued EA for box cover using Ricky Williams displaying tattoo on various football games including NFL Street, Madden NFL 10, and Madden NFL 11. ! Settled out of court.

Friday, May 17, 19 HANGOVER 2 CASE

8

! Artist sued Warner Bros re: the film Hangover Part 2. See complaint at http://s3.documentcloud.org/documents/ 96500/20110521tattoocomplaint.pdf ! Artist claimed tattoo that appeared prominently on actors’ face was copied from the tattoo he inked on Mike Tyson. ! Tattoo appeared throughout the film as well as advertising and promotional items of the film.

Friday, May 17, 19 HANGOVER 2 CASE

9 ! Judge rejected artist request for a preliminary injunction, but noted that tattoos are copyrightable and artist might have a strong case based on the merits. "Establishes credibility that tattoos are copyrightable "Judge rejected fair use (parody) defense. ! Settled out of court. ! See (trailer of film) https://www.youtube.com/watch? v=9xXBjtAGIzE

Friday, May 17, 19 ESCOBEDO V. THQ

10 ! Artist sued THQ in bankruptcy court regarding a tattoo on UFC fighter that appeared in the game entitled UFC Undisputed 2010. See complaint at https://randazza.files.wordpress.com/2012/12/ escobedo-complaint.pdf ! Artist sought $4.16 million or 2% of revenue based on sales. How did he calculate the number? • $59.99 for retail version. • Game sold approximately 660,000 copies at time complaint was filed.

Friday, May 17, 19 THQ CASE

11 ! Judge awarded $22,500 which was payment made by THQ to the fighter for his likeness used in the game https:// www.hollywoodreporter.com/thr-esq/tattoo-artist-looks-show- value-625509 ! Artist appealed damage amount and case later settled out of court.

Friday, May 17, 19 REED v. NIKE (RASHEED WALLACE CASE)

12 ! Tattoo artist claimed copyright infringement for a tattoo inked on former professional basketball player Rasheed Wallace. See Reed v. Nike, Inc., No. 05-CV-198 BR (D. Or. Feb. 10, 2005). ! Tattoo appeared as the theme to a subsequent Nike television commercial. ! Ad involved the tattoo being recreated with Wallace explaining the meaning of it. See https://www.youtube.com/watch? v=bXPhGf8Bi74

Friday, May 17, 19 REED V. NIKE CASE

13 ! Wallace paid $ 450 and there was no contract, license, or work- for-hire agreement signed by the parties before the tattoo was completed. Typical scenario. ! Artist sought “all of the defendants' profits, a share of the revenue that Wallace received from Nike, pre-judgement interest, an injunction, and actual damages, costs, and disbursements." ! Settled out of court.

Friday, May 17, 19 TATTOOS-SOME IP ISSUES

14 ! Are tattoos copyrightable? ! Are tattoos skinned on people copyrightable? ! If so, who owns the copyright? ! What rights does an artist have? ! What rights does the customer have? ! Does rights of publicity come into play? ! Has an agreement been signed between the parties addressing ownership rights?

Friday, May 17, 19 COPYRIGHT ISSUES

15 ! Tattoo is typically owned by the artist and not the person with the tattoos. ! Tattoos appear to be copyrightable under US copyright laws: • Original work of visual art; • Fixed in a tangible medium; • Work is fixed “when its embodiment … is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” • Fall under one of the categories protected by copyright; and • Minimum amount of creativity. ! But, could there be an exception to artwork on human flesh?

Friday, May 17, 19 COPYRIGHT ISSUES

16 ! Who owns the copyright? • If the artist, does he/she have control over an image that appears on another person? • Do traditional copyright rights such as reproduction, derivatives, modification, distribution come into play? • Is a bearer prohibited from exploiting the image without the permission of the artist? • Can a bearer alter the tattoo or cover it up? • Possible solution: • The artist could own a copyright in the tattoo (provided meets the copyright requirements and the parties do not enter into an agreement granting rights otherwise) • But, excludes rights to control the exploitation of a bearer of a tattoo provided the tattoo is not the focus of the commercial exploitation • Examples: photos, tv, video games (including covers), figurines, merchandise where the likeness of the person appears and the tattoo appears as part of the person’s persona. • Bearer of tattoo could not exploit the tattoo unless falls into the above scenarios. All other rights to exploit the tattoo held by artist. • Will need to determine when the tattoo is the focus of the commercial exploitation.

Friday, May 17, 19 CHANGES IN DEVELOPMENT

17 ! EA appears to have limited recreating tattoos in their sports games. • According to a NYT’s article, there are about 100 tattoos in EA’s FIFA game and UFC game • Only a handful of athletes have tattoos in EA’s Madden • NFLPA (Union for professional NFL players) since 2014 has informed players tattoos will not appear in games, merchandise or ads without a license from artist • Lionel Messi in EA’s FIFA game

Friday, May 17, 19 POSSIBLE DEFENSES

18 ! Implied non-exclusive license ! Fair Use • Parody argument • Depicting actual events ! Work Made for Hire ! Joint authorship ! De Minimus use ! Rights of Publicity (?)

Friday, May 17, 19 DANCING CONTROVERSY

19 • A number of celebrities have claimed their copyrights in their dance moves were infringed by game developers. • Fortnite (Epic Games). • NBA 2K series (Take Two Interactive Software).

Friday, May 17, 19 CARLTON CASE

20 ! Actor Alfonso Ribeiro who played Carlton Banks on the Fresh Prince of Bel-Air tv show claimed to have created a dance known as the Carlton. ! A similar looking dance appeared in Fortnite called “Fresh.” Also, appeared in NBA 2K.

Friday, May 17, 19 FLOSS DANCE

21 ! Lawsuit filed on behalf of Russell Horning aka The Backpack Kid against Epic for copyright infringement involving his dance called the “Floss.” Dance became popular on the American tv show Saturday Night Live.

Friday, May 17, 19 MILLY DANCE

22 ! Rapper Terry Ferguson known as 2 Milly accused Take-Two of using his “Milly Rock” dance which looks similar to his dance in Fortnite known as “Swipe It.” ! Also filed a complaint against Take-Two Interactive involving NBA 2K18.

Friday, May 17, 19 NEW MOVES IN THE DANCING CONTROVERSY

23 ! In a recent, unrelated case, the Supreme Court noted: “under the Copyright Act, a plaintiff can't sue for copyright infringement until the U.S. Copyright Office has either granted or refused the person's application for registration. ! None of the parties could meet the SC’s requirement and therefore Rapper Terrence Ferguson (2 Milly), Alfonso Ribeiro, Backpack Kid, and Orange Shirt Kid have all dropped their copyright lawsuits against Epic Games. ! Temporary setback? Once registration filed, will lawsuits be filed again.

Friday, May 17, 19 IS IT COPYRIGHTABLE?

24 ! Is a short dance copyrightable? • Concern that individual dance moves considered to form the foundation or building blocks for other works. ! Does it fall under the definition of choreography which is protected by copyright? • What is the threshold when individual dance moves suffice to be considered choreography? ! No definitive case law on this issue, but in 2017 U.S. Copyright issued a guidance stating that cannot register "short dance routines consisting of only a few movements or steps with minor linear or spatial variations, even if a routine is novel or distinctive. "

Friday, May 17, 19 IS IT COPYRIGHTABLE

25 ! In February 2019, Copyright Office decided not to register the copyright to the Carlton dance. • Copyright Office noted it was a simple dance routine, and therefore not a choreographic work.

Friday, May 17, 19 RIGHT OF PUBLICITY

26 ! Is there a possible rights of publicity claim? ! Are the dances signature moves that identifies the person right-of- publicity claim if the dance is a signature move that identifies the person’s persona and therefore indicates an endorsement of the product? ! If it does, are there first amendment and fair use arguments in Epic’s defense?

Friday, May 17, 19