We previously blogged on a New York case that considered these thorny issues. In a new blog published in our Sports Shorts blog, we look again at this issue as very recently adjudicated by an Illinois court.

Were these issues to be litigated in the UK, a similar result would likely arise. Namely, a tattoo will be protected by copyright as an artistic work, as long as the design is the author’s own intellectual creation (and not slavishly copied from a previous work). However, there are notable differences to the approach under English law. For example, the UK has no system of copyright registration, so proof of ownership of copyrights is usually a matter of demonstrating authorship and (if relevant) a valid assignment – i.e. being able to prove chain of title.

As to whether the copyright in the tattoos on a real person is infringed where that person is reproduced digitally in a computer game, one might look to the case of the Football Association Premier League v Panini, where the England football team’s logo was reproduced on football sticker albums without permission. In that case, the court held that there was no copyright infringement because the inclusion of the artistic work was OK under the UK’s fair use doctrine, found in s.31 of the Copyright Designs and Patents Act 1988 for “incidental inclusion”. Similarly, an English court might say that a tattoo that does not feature prominently as part of any gameplay benefits from this exception.

Another key distinction with the Illinois court approach is that the UK has no jury trials for copyright infringement. Instead, cases are heard by single judges, quite often experienced lawyers specialised in intellectual property law matters.

In the Illinois case, the tattoo artist, Catherine Alexander, brought a motion for summary judgment against the developers of the WWE 2K video game series, which featured the tattoos on professional wrestler and current WWE champion, Randy Orton.  The artist’s motion was not successful. England also has summary judgment and interim injunctive relief options, and the thresholds for success are also high. In any difficult case a court will prefer to put the matter forward for trial, rather than rule at the interim stage. For interim relief, even if there is a serious issue to be tried, a ‘balance of convenience’ test must also be overcome. Similarly, for summary judgment, one must show that the claim has no real prospects for success – a real challenge if there is potentially a decent legal argument for infringement.

The interesting thing to consider is whether the result would be different in either the US or the UK if the tattoos (or some aspect of them) were registered as trade marks. In the UK, there is no ‘fair use’ exception for trade mark infringement, so presumably the claimant/plaintiff would have a strong argument for infringement, depending on whether they had obtained a registration for use in relation to computer games. Under English law, obtaining a trade mark registration for an original graphic design would not usually be problematic, the applicant would merely have to demonstrate that it can indicate trade origin (it must be distinctive). That said, a defendant would likely argue that use of that design as a tattoo on an avatar within the game is not trade use diminishing the so-called “essential function” of the mark and thus not infringement.