Copyright Over Body Art

In October, Rick Genest, a model from Montreal who appeared in a Lady Gaga video (and has been called “Zombie Boy” for his distinctive skeletal body art) claimed that Twentieth Century Fox Television infringed his copyright when it featured a character wearing skeletal body makeup in an episode of FX’s American Horror Story.  In an earlier, more high profile case, Whitmill v. Warner Bros., tattoo artist Victor Whitmill claimed that the “tribal” style tattoo appearing on actor Ed Helms’ face after a night of debauchery in the movie Hangover 2 was an unauthorized reproduction of the face tattoo design created by Whitmill for Mike Tyson, who appeared in the first Hangover movie.

Although both cases ultimately settled out of court, they focus attention on the novel legal issues arising from the intersection of copyright law and tattoos, the threshold issue being:  Are tattoos protected under copyright law?

Under s. 2 of Canada’s Copyright Act, an “artistic work” includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works and compilations of artistic works.  Although tattoos are not specifically mentioned in this list, the description is non-exhaustive and, as copyright expert David Vaver has noted:  “Copyright law cannot discriminate among different schools of art.”

Consequently, from a copyright law perspective, tattoos are treated no differently than other artistic works, such as paintings or photographs.

Under section 3(1) of the Act, the owner of an “artistic work” has the sole right to reproduce the work (or any substantial part thereof) in any material form whatever, and to adapt and present the work to the public.

Accordingly, if Warner Bros., Twentieth Century Fox or, for that matter, producers of the recently proliferating “tattoo lifestyle television programs” (e.g., Ink Master, LA Ink and America’s Worst Tattoos) wish to use tattoos or body art in their productions, under Canadian (and U.S.) copyright law, they must acquire a valid assignment or license of rights from the copyright owner (unless they can rely on “fair dealing” or another defense under the Act).  It is worth mentioning that no assignment or grant of copyright will be valid, under the Act, unless it is in writing signed by the owner.

The Hollywood studios could have avoided these lawsuits had they obtained a license of rights from the appropriate copyright owners.  But does this mean that Tyson, too, needs permission from copyright owner Whitmill to use his face tattoo for his own purposes?  It has been argued by IPilogue’s Brent Randall, David Vaver and others that an implied license from the copyright owner, for which no writing is required, may be an available defence to tattoo wearers, such as Tyson.  The problem with this implied-licence concept, however, is that the intended scope of the license is not obvious.

While there can be no doubt that Whitmill understood that Tyson would display the tattoo as part of his daily life and activities, if there was an implied license, it is not clear whether it also included the right for Tyson to have his face tattoo photographed, filmed and reproduced in any manner, media or territory without requiring additional permissions from, or payments to Whitmill.  Since Tyson was already famous when he acquired his tattoo, it was within the realm of probability that he would be photographed and filmed as a routine part of his celebrity lifestyle.  By the same token, featuring the unique tattoo in a product endorsement (see Matthew Reed v. Nike Inc., a case where NBA player Rasheed Wallace’s tattoo was featured in Nike ads) or as a plot point in a major Hollywood studio film (as in Hangover 2) may well exceed the scope of such implied license.

In light of the recent tattoo cases and as body art becomes more mainstream, it is advisable for entertainment clients to obtain proper written agreements from those who display - and those who own - copyright-protected designs, visible tattoos and body art.  For example, releases should require all on-camera talent to: (a) refrain from displaying any tattoos, especially if they incorporate any recognizable logos or other copyrighted material, or the name or likeness of a celebrity; or (b) represent and warrant that they either own the copyright in such artworks or have a valid license from the copyright owner to display and reproduce the artwork and have the right to license others to do the same.  Also, to avoid moral rights claims in Canada, the agreement should also confirm that the released parties have the right to alter, modify and/or remove the tattoo altogether, if desired.

Given the potential litigation costs - courts can award not only actual damages, but statutory damages and an accounting for profits - and the considerable expense of digitally altering or removing infringing tattoos and body art from audio-visual works, not addressing copyright issues up front can result in costly mistakes and potential Tattoo Nightmares (as seen on Spike Channel).

This article originally appeared in the January 18, 2013, issue of The Lawyers Weekly published by LexisNexis Canada Inc.