A recent New York Times article chronicles legal challenges around the reuse of tattoos in sports video games. The problem arises when a tattooed athlete grants permission to a game manufacturer to use his likeness, and his likeness includes the ink on his arms. Copyright comes into existence the moment something capable of copyright protection is “fixed in a tangible medium of expression.” Art is a core type of expression protected by copyright, and the amount of protection does not change simply because the art is fixed on paper, canvas, a building, or a body. Once created, the copyright belongs solely to the artist and remains with her unless transferred or licensed. When a collector buys a painting, he does not acquire the copyright. When a reader buys a newspaper, neither does she. The same rule applies with tattoos, even though, as LeBron James asserted in one lawsuit involving use of his tattoos by a video game company that he licensed, the tattoo is part of his identity.
Of course, art is a unique form of copyrighted content too. The Copyright Act allows the owner of the physical embodiment of a work (such as a painting) to publicly display a work or project a work at the location thereof without the express authorization of the copyright holder (the artist). This presumably includes the right for a museum to charge admission to view in-copyright works. And, while there is some debate, sellers of works will often make copies (such as a photograph in a catalog) under fair use or implied license for the purpose of advertising the sale. And art in public spaces, as well as art on public figures (such as James), presents unique challenges.
The lawsuit involving James is instructive. While in Solid Oak Sketches LLC v. Visual Concepts LLC the U.S. District Court for the Southern District of New York rejected a motion to dismiss the complaint brought by the game manufacturer, the opinion by U.S. District Judge Laura Taylor Swain sets forth the issues that will ultimately determine the results of the claims. There is no question that the tattoos were faithfully copied, and that they are in fact copyrightable. According to the court, the questions to be resolved are whether the use amounts to “fair use” (an excusable infringement) or are so trivial that they fit under the de minimis rule (from the legal phrase “de minimis non curat lex”; basically, this use is so small that it is stupid to waste court time). The court rejected the motion to dismiss because there was not yet enough information to decide on either defense so early in the case. The merits have yet to be decided.
While the facts of the James case are interesting, they seem at first glance unlikely to be broadly applicable. Looks can be deceiving, however. The challenge that the claims highlight is what we refer to as the “embedded materials” problem. Embedded materials are third-party copyrighted materials included in a work that is otherwise licensed for reuse but as to which the copyright holder in the embedded material has not granted permission for further use, such as the rights of a tattoo artist whose work is included on the arms of a famous athlete. The embedded materials challenge has real-world consequences both in open educational resources and open access publishing.
Embedded Materials and OER
According to a definition from the United Nations Educational, Scientific and Cultural Organization, “Open Educational Resources (OERs) are any type of educational materials that are in the public domain or introduced with an open license;” typically a Creative Commons attribution or CC attribution-noncommercial license. OERs range from textbooks to curricula, syllabi, lecture notes, assignments, tests, projects, audio, video and animation. Depending on the exact form of open license used, these materials can generally be legally and freely copied, used, adapted and reshared.
OER has been very successful in disciplines where third-party content is not needed, such as math. The embedded materials problem has created challenges in other areas, such as English language arts, where educational standards require that students be exposed to real world, “authentic” third-party content.
In some cases, such as the highly regarded Louisiana Believes Curriculum, the OER creator arranges for copyright compliance for print and electronic delivery of third-party content to the school and the student through a partner. In other cases, developers rely on a “whole work only” approach, essentially requiring that each student has his/her own copy of each book. This works well enough in lower grades when the books are relatively short and inexpensive but does not scale well for cost reasons at higher levels. In the least successful cases, an OER developer will link to third party sites. With common problems such as link rot, infringing content and privacy concerns, it should surprise no one when these curricula are not adopted.
Embedded Materials and OA
With OER, there is at least a path to solving the embedded materials challenge. With open access publishing of science and social science articles, it is much harder.
Open Access, like EOR, is typically defined in part by the type of license pursuant to which content is published — again, generally CC-By or CC-By-NC licenses. An author may publish an article under CC-By because of a personal preference, because of a funder mandate, or because it is the only option offered by the publisher. Regardless, an author will always want to include the most appropriate figure, chart, table or other artwork and, unless that material comes from the author herself, a CC-By or public domain source, or is non copyrightable data, the embedded materials problem arises.
But it is not the author who has the problem. Usually the author will have permission to use the materials in the work she has created, and there is a strong tradition in scientific, technical and medical publishing to freely allow reuse by authors. The problem is that reuse of the author’s otherwise fully OA materials can cause liability for reusers. When an author uses material with permission, that permission is usually personal to the author, and usually requires credit and a copyright notice in the author’s work identifying the original creator of the embedded materials. But the reuser has no such permission and so may be liable for a claim by the owner of the embedded materials for any reuse.
The presence of a copyright notice, at least under U.S. law, defeats any claim by the ultimate user of innocent infringement. Thus a user would need to defend a claim another way, for example by asserting fair use or de minimis use. The de minimis defense is seldom successful and use of an entire figure or table in a manner crucial to the article is in any event unlikely to be viewed as de minimis. Thus the primary line of defense would be fair use, a legal doctrine that formally exists only in three countries. And the challenge of defending a claim with fair use is that proving it is highly fact-specific. A court reviewing reuse of a figure could look at nearly identical facts in two different cases and reach a different conclusion in each based on, e.g., whether the user is a commercial or noncommercial entity.
Back to LeBron James
In law school, I had a professor who would, when quoted cases by a student, exclaim, “Don’t tell me what the cases say; tell me what your mother would say.” His view was that courts will ultimately reach a just result, and I generally agree, although they do sometimes seem keen to first exhaust all other options.
In the case of James, it would be unjust to prevent him from earning money in a reasonably expected manner simply because he paid for a tattoo, and as a result of the court’s applying the de minimis rule, fair use, or even implied license, the ultimate decision will likely be in his favor in the absence of surprising facts. Still, the court was right to deny a motion to dismiss, as there are many triable issues of fact that must be established. Difficult copyright concepts, especially when applied to cases involving commercial use, can lead to surprise results.
A version of this article originally appeared in Law360.