Written by Aritra Mitra*
In today’s multi-billion-dollar sports industry, tattoos have become quite ubiquitous and have garnered significant attention in the media. Global superstars in different sports have become bearers of several and unique tattoos. Along with the attention, it also leads to controversy, for example, recently with the Three Percenters tattoo on Justin Rohrwasser of New England Patriots or the Gun tattoo on the right leg of Raheem Sterling.
With the increasing number of athletes displaying tattoos, it leads to legal issues when these tattoos become visible in brand advertisements. The primary issue that arises is who owns the copyright to the tattoo, inevitably leading to legal action against both the bearer of the tattoo (the athlete) and the third-party brand using the athlete’s image.
In today's multi-billion-dollar sports industry, tattoos have become ubiquitous and garnered significant attention in the media. Global superstars in different sports have become bearers of several unique tattoos. Along with the attention, it also leads to controversy, for example, recently with the Three Percenters tattoo on Justin Rohrwasser of New England Patriots or the Gun tattoo on the right leg of Raheem Sterling.
The increasing number of athletes displaying tattoos leads to legal issues when these tattoos become visible in brand advertisements. The primary issue is who owns the copyright to the tattoo, inevitably leading to legal action against both the bearer of the tattoo (the athlete) and the third-party brand using the athlete's image.
Legal Scenario in the United States
The most prominent case regarding this issue in the United States was Mike Tyson's tattoo case in Victor Whitmill v Warner Brothers, 1-cv-00752 (E.D. Mo. April 28, 2011). Warner Brothers were sued for the use of the face tattoo of Mike Tyson in promoting 'The Hangover Part II' and for the use of the copyrighted mark on Ed Helms' face in the movie by the tattoo artist of Mike Tyson, named Victor Whitmill. The primary issue was copyright ownership since there existed an agreement between the tattoo artist and Mike Tyson granting copyright. Later on, the dispute was settled.
Copyright issue over tattoos of sports stars also arises due to unlicensed use of the image of the tattoo in video games. This was the case in Alexander v. Take-two Interactive Software, Inc., 489 F. Supp. 3d 812 (S.D. Ill. 2020), a tattoo filed a lawsuit for unlicensed usage of WWE wrestler Randy Orton's tattoos in a video game. In the summary judgment motion, the Court favoured the tattoo artist because no clear ground was established to show that Randy Orton had the license to make commercial usage of the tattoos and that Take-two Interactive Software's usage of the tattoo was not unambiguously fair.
With few cases pertaining to this issue, many questions remain unanswered. Like, can an athlete be granted implied license to commercialize the tattoos after creation, or if the tattoo artist be deserved to a fair share of the commercial usage of the tattoos, or if a display by a third party constitutes fair usage under the federal copyright law of the country, and whether it will be determined separately by the law of the jurisdiction, in which the athlete was tattooed.
Legal Scenario in the United Kingdom
In the U.K., tattoos fall under the umbrella of original artwork, and for this segment, the copyright exists even seventy years after the artist's demise. The ownership and copyright belong and remains with the artist unless assigned to a third party. The primary issue in the U.K. do not pertain to who owns the copyright and for how long, but with the documentation to provide evidence of copyright ownership, because of the absence of a proper copyright ownership system. Legal issues may also arise from players honing tattoos, which reproduces an artistic work created by a third party. In this case, that particular party can assert copyright claims against the player and any organization/entity granted the right over the image of that tattoo.
The U.K. has a fair dealing doctrine in Sections 29 and 30 of the Copyright, Designs and Patents Act 1988, which protects third parties from lawsuits in case there has been an incidental and innocent commercial usage of an athlete's tattoos. But there lies a loophole in this particular doctrine. It has not been effectively clarified by the Courts of the country, whether a third party will be protected in a situation where an athlete grants the rights to his tattoos unintentionally without the due license from the tattoo artist.
Necessary Considerations for Brands
So, how are brands dealing with these situations? They are now including expressly stated clauses in contracts dealing with image rights of athletes and sports stars. Brands should be asking for warranties from the athlete while acquiring the license for commercial usage of tattoos and indemnification from the athlete in case any damage is caused within the license's scope or if the warranties provided turn out to be inaccurate.
Brands need to perform their due diligence before entering into a multi-million-dollar deal, which involves the image of a player/athlete. The tattoo artist should be identified, and the jurisdiction in which the tattoo was received should be enquired to gauge an idea regarding the laws that might apply.
Necessary Consideration for Athletes
In today's sport, everything depends on the commercialization of image, so athletes must consider whether the tattoo is a common design, an original work, or the reproduction of an existing copyright work. In case the tattoo happens to be a common design, then the chances of the tattoo artist claiming copyright diminishes. But things start to get complicated when the tattoo bears a reproduction of a work previously copyrighted by a third party.
The more unique a tattoo is, the easier it will be for the athlete to address copyright and licensing issues with the artist. Also, the athlete must look for the jurisdiction to get the tattoo to get an idea as to what laws will apply when licensing issues crop up at a later stage.
Now, comes another important consideration an athlete might look into before getting a tattoo. Athletes may negotiate an agreement or a pre-agreement with the tattoo artist to get the copyright of the tattoo assigned to them and use it for commercial purposes. They may also claim warranties regarding the uniqueness of the design and indemnification if the tattoo happens to be a reproduction of a third-party design.
With increasing players honing tattoos and increasing assertion of copyright rights, it seems inevitable that there will be increasing disputes over athletes' image rights. Tattoo artists will now be much more like to gain a share from the commercialization of their work. Whereas brands will be much more aware and try to avoid deals that might involve costly and time-consuming litigation. So, athletes need to be more aware and careful before getting tattoos, and brands have to be careful before entering into deals involving the image rights of athletes having tattoos.
* The author is a law scholar at National Law University Odisha, India.
(The image used here is for representational purposes only)