Kriti Rajput

10/17/13

IP Theory

Professor Friedman

Is Tattoo Design an Original Work of Art Protected by International Intellectual Property Law?

For decades tattoo artists have had little protection for their original artwork and the tattoo industry itself has been viewed as outside of the scope of intellectual property law. In the last 15 years, they have gotten more recognition both in the United States of America and in the international arena. Now some countries have begun to recognize tattoo design as original works of art, whereas countries like the United Kingdom have yet to address the issue. Still, there is little case law precedent governing intellectual property protection for tattoo artists. This is partially due to the difficulty of finding infringements along with the lack of mainstream people with money who can be targeted for these lawsuits.[1] Its unrealistic to find infringements for tattoo artists unless they are seen on the uncovered skin of a consumer or the tattoo artist posts an infringing design on their wall or website.[2] Tattoo piracy is unfortunately common, but there is little litigation for it except in cases related to tattoo “flash”, which references pre-made designs that artists make available for walk-in clients. Intellectual property law is slowly, but surely, transforming in a manner that provides tattoo artists with copyright, patent and trademark protection both domestically and internationally; although copyright protection is going to be the dominating way of enforcing intellectual property infringement in this particular field.[3]

Mueller Sports Medicine, Inc. v. Beveridge Marketing LLC. was one of the first cases where patent infringement was brought up for a tattoo product.[4] Plaintiff Mueller Sports had patented an under-eye light-absorbing device and defendant Beveridge Marketing had sold a similar Eye Black product as a customizable temporary tattoo designed for under-eye placement. The district court eventually ruled that there was no patent infringement in this case as the product itself was not composed of similar pliable sheet material as the alleged infringed patent had described. Since patents provide such a specific form of intellectual property protection, it is incredibly difficult to apply this protection to the field of tattoos. Tattoo designs will vary from person to person as it is impossible for an artist to match another human artists design without some flaws, plus the tattoos change on the skin type and body type of the person they are drawn on. They are meant to be versatile in nature, which would be difficult to patent a set process for unless it is a new technique to create or apply body art. Temporary tattoo products like the under-eye black can certainly be patented, but that does not offer protection for original artwork that many tattoo artists seek.

Trademark law can also be an effective way of providing intellectual property protection; however, it can only prohibit certain commercial uses of the mark in conjunction with the sale of goods or services.[5] Playboy Enterprises, Intl. registered the Rabbithead logo for trademark protection and included tattoos as one of the goods and services it provided.[6] Some people are even willing to get trademarks tattooed with companies who will pay for the tattoos to transform themselves into walking billboards for products; one man even auctioned off his forehead for this purpose.[7] A more unique example is the piercer who registered a back tattoo of angel wings as a trademark for her services and had the ® symbol tattooed next to it to enhance her legal protection for it.[8] [9]

Alleging trademark infringement has been successful for some artists including Daddyo’s Tattoo’s and Piercings who had registered the “Daddyo’s Tattoo” service mark and won part of the suit against Daddy-O’s Tattoo’s Inc. for trademark infringement, unfair competition, and false or misleading representations of fact.[10] The defendant had been using marks confusingly similar to the plaintiff’s mark without any authority or consent of the plaintiff.

The issue in question now is whether the act of tattooing a trademarked symbol onto another person’s body for money constitutes trademark infringement. Merely having a tattoo that incorporates another’s trademark is not enough to constitute infringement.[11] Some cases that relate to trademarks on jewelry imply that tattoo artists may also escape trademark liability. One example is in Order of Rainbow for Girls v. J.H. Ray Jewelry where the Fifth Circuit held that the unauthorized use of fraternity’s collective mark on jewelry did not constitute infringement because they were being merchandised based on their intrinsic value.[12] In Plasticolor Molded Products v. Ford Motor Co., Judge Kozinski established a method of analysis for “mixed-use” marks that serve as source-identifiers and functional products themselves.[13] His analysis provides that the point-of-sale confusion can be reduced by “a clear indication at the point of sale . . . that the product is not manufactured or sponsored by the registrant.” There may still be some post-sale confusion, but that this confusion “can be diminished . . . by requiring that the manufacturer of a product that employs a trademark for functional purposes take all reasonable steps to eliminate post-sale confusion consistent with the functional use of the mark.” This could include “plac[ing] a disclaimer on a portion of the article not generally visible while the article is in use,” but in other contexts (such as jewelry) no reasonable measures may be feasible.

There are also cases that suggest that body artists may not be able to escape trademark liability. For example, the Fifth Circuit held that the sale of patches with the logo of professional sports teams constitutes infringement as it creates confusion regarding sponsorships even if the logo is not actually attached to any merchandise.[14] Under this analysis, trademarks in the tattoo industry would effectively protect the original work of artists against unauthorized use of their work because the mark is being used in relation to a sale of a product or service. However, a counterargument to this is that sports emblems are frequently used for the advertisement of products, which makes trademark protection more likely in those cases where most consumers would assume some association between the product being sold and the team. Regardless of case precedent in this industry, it will be difficult for a tattoo artist to win a trademark infringement case for his/her original work.

In the copyright arena, there are groups forming like the Tattoo Design Right International group from the United Kingdom whose purpose is to combat tattoo piracy of the pre-drawn artwork in tattoo parlors.[15] Under English law, the copyright of any new design belongs to the tattoo artist; this means that people looking to get inked should ensure that they have the copyright holder’s consent or all rights have been transferred over before the inking process begins. Many consumers are not fond of this notion of having to obtain rights to do what they want with their own body.

Under the Berne Convention, literary and artistic works include “every production in the literary, scientific and artistic domain, whatever may be the mode of form of its expression.[16] Countries like Singapore and Malaysia are signatories to international copyright agreement including the Berne Convention, so in a recent case, a Malaysian court would recognize copyright infringement of a Singaporean’s original tattoo design work and allow him to take action there.[17] Some body art lacks even the minimal amount of originality needed for copyright protection such as a standard heart, butterfly, or lips tattoos. There have been cases where the court found that a makeup artist’s designs were original and expressive enough to afford copyright protection, such as those from the Cats musical.[18] Copyright is initially vested in the author of a work, who may then assign or license it to someone else.[19] In the international arena itself, there is some confusion as to who would own the copyright between the tattoo artist, the tattoo customer, the tattoo shop owner, or another artist who creates the design. One way of assigning copyright is to consider the body artist like the painter or photographer who would own the copyright to their own work even if it includes the image of another person and the other person can own the physical object/canvas upon which the work is done.[20] Another way to analyze whom the copyright would vest with is to classify the copyright as a joint work prepared by multiple authors, which would only work if both the subject and the artist contributed independently copyrightable expression where the artist may consult with the customer on the tattoo design.[21] Finally, it can also be analyzed as work made for hire where copyright ownership would belong to the employer and not the artist so that the tattoo shop owner can claim the artist’s work product as within the scope of their employment.[22]

Besides identifying copyright ownership, identifying an infringer is also difficult for tattoo artists. Generally the laws provide that someone who copies a substantial piece of the copyrighted work without consent of the owner is a prima facie infringer of the copyright and needs an affirmative defense to escape liability.[23] Under this provision, any unauthorized infringer who reproduces the copyrighted work onto another body art piece or other medium would be liable for damages or an injunction. The issue here is whether the owner of the copyright would have a claim for people like the paparazzi who take pictures of people who may be publicly displaying the copyrighted body art in those pictures. The cost of enforcing copyrights against casual photographers would be excessive unless the photograph was presented to a wide audience or the owner of the copyright wanted to set an example for others. Another cause of action for copyright infringement could be violation of the copyright holder’s moral rights or protection against distortion under the Visual Artists Right Act.[24] VARA gives artists moral rights including the right to claim authorship of the work, the right to prevent the use of their name as an author of the work that he/she did not create or was distorted in a way that may harm the artist’s reputation, and the right to prevent intentional modification of that work.[25] There are of course many issues with enforcing copyright infringement under moral rights of the artists including the difficulty for the artist to discover what the body owner has done with the tattoo after the point of sale unless that person has considerable media exposure.

All in all, the tattoo industry has a ways to go before tattoo artists can achieve proper protection for their intellectual property and recognition for their art as original works. The issues that these artists face are becoming more pronounced both in the United States and in the international arena. Thanks to the Berne Convention, there are at least some countries that are willing to enforce copyright infringement causes of action for tattoo artists both domestically and internationally. With more artists keeping track of their designs and more case precedents helping us to formulate the laws that will allow tattoo artists to enforce their intellectual property protection, we are definitely moving in the right direction for the future of this industry.

---

[1] M Kakoulas, “The Great Tattoo Copyright Controversy” BMEzine, 12 August 2003: <http://www.bmezine.com/news/guest/20031208.html>.

[2] Elizabeth L. Rosenblatt, A Theory of Ip's Negative Space, 34 Colum. J.L. & Arts 317, 353 (2011).

[3] D Hunter, Culture War (2005) 83 Tex. L. Rev. 1105.

[4] Mueller Sports Med., Inc. v. Beveridge Mktg., LLC, 369 F. Supp. 2d 1028, 1031 (W.D. Wis. 2005) aff'd, 177 F. App'x 84 (Fed. Cir. 2006).

[5] Hatcher, Jordan S., Drawing in Permanent Ink: A Look at Copyright in Tattoos in the United States (April 15, 2005).

[6] Playboy Enterprises Intl., RABBITHEAD, Registration 2666917, 20 March 2000.

[7] TatAd, “Get Branded, Get Paid!”: <http://www.tatad.com/>; See A Fischer, “About me”: <http://www.humanadspace.com/site/about.html>.

[8] Elayne Angel, SLAVE, Registration 2645270, 5 November 2002.

[9] M Kakoulas, “The Great Tattoo Copyright Controversy” supra; E Angel, “Elayne Angel Wings Registration” supra.

[10] Quidgeon v. Olsen, 10-CV-1168, 2011 WL 98938 (C.D. Ill. Jan. 11, 2011).

[11] Thomas F. Cotter & Angela M. Mirabole, Written on the Body: Intellectual Property Rights in Tattoos, Makeup, and Other Body Art, 10 UCLA Ent. L. Rev. 97, 124-27 (2003).

[12] Supreme Assembly, Order of Rainbow for Girls v. J. H. Ray Jewelry Co., 676 F.2d 1079 (5th Cir. 1982).

[13] Cotter & Mirabole, Written on the Body at 125.

[14] Boston Prof'l Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975) disapproved of by Univ. of Pittsburgh v. Champion Products, Inc., 566 F. Supp. 711 (W.D. Pa. 1983).

[15] Tattoo Design Right International: <http://www.tattoodesignright.com/>.

[16] Bern Convention for the Protection of Literary and Artistic Works, Article 2 (1).

[17] Singapore and Malaysian Artists in Online Battle Over Copycat Tattoo, The Straits Time/Asia New Network. Lim Yan Liang (2013). <http://www.chinapost.com.tw/art/arts/2013/10/21/391705/Singapore-and.htm>

[18] Carell v. Shubert Org., 104 F. Supp. 2d 236, 247 (S.D.N.Y. 2000).

[19] 17 U.S.C. § 201(a) (1996).

[20]17 U.S.C. § 202 (1996).

[21] Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1067-73 (7th Cir. 1994).

[22] 17 U.S.C. § 201(b) (1996).

[23] Cotter & Mirabole, Written on the Body at 108.

[24] Pub. L. No. 101-650, §§ 601-10, 104 Stat. 5089, 5128-33 (1990).

[25] 17 U.S.C. § 106A(a)(1) (1996).